Copyrighted Crimes - The Copyrightability of Illegal Works

Yale Journal of Law and Technology
Volume 16
Issue 2 Yale Journal of Law and Technology
Article 5
2014
Copyrighted Crimes: The Copyrightability of

Illegal Works
Eldar Haber
Haifa Center for Law & Technology
Follow this and additional works at: http://digitalcommons.law.yale.edu/yjolt

Part of the Computer Law Commons, Intellectual Property Law Commons, and the Science and
Technology Law Commons
Recommended Citation
Haber, Eldar (2014) "Copyrighted Crimes: The Copyrightability of Illegal Works," Yale Journal of Law and Technology: Vol. 16: Iss. 2,
Article 5.
Available at: http://digitalcommons.law.yale.edu/yjolt/vol16/iss2/5
This Article is brought to you for free and open access by Yale Law School Legal Scholarship Repository. It has been accepted for inclusion in Yale
Journal of Law and Technology by an authorized administrator of Yale Law School Legal Scholarship Repository. For more information, please contact
julian.aiken@yale.edu.
Haber: Copyrighted Crimes: The Copyrightability of Illegal Works
COPYRIGHTED CRIMES:
THE COPYRIGHTABILITY OF ILLEGAL WORKS
Eldar Haber*
16 YALE J.L. & TECH. 454 (2014)
ABSTRACT
Copyright law does not explicitly impose content-based restrictions
on the copyrightability of works. As long as a work is original and fixed in a
tangible medium of expression, it is entitled to copyright protection and
eligible for registration, regardless of its content. Thus, child pornography,
snuff films or any other original works of authorship that involve criminal
activities are copyrightable. Such work can be highly profitable for its
makers even though society does not necessarily benefit from, and might
even be harmed by, the work. Along with revenue from sales, the author of
an illegal work may also be able to collect damages for infringement. This
scheme does not benefit society and should be revised.
After examining how the current copyright regime deals with works
involving illegal activity, this article suggests a new framework. First, I
review the elements of copyright and consider existing content-based
restrictions in copyright, trademark, and patent law. After evaluating
whether copyright law should impose content-based restrictions on illegal
works, and whether such impositions would be constitutional, I conclude
that creators should not benefit from works that are linked to harmful
criminal activities. I propose a new framework for the copyright of such
works that de-incentives their creation by eliminating profits from the works
themselves and reducing profits from the felons other works due to his or
her notoriety, while also compensating victims.
* Postdoctoral Research Fellow, Haifa Center for Law & Technology, Faculty of Law,
Haifa University. I thank Ann Bartow, Michael Birnhack, Assaf Eckstein, Niva ElkinKoren, Olga Frishman, Maytal Gilboa, Ayelet Hochman, Assaf Jacob, Mark Lemley, Yafit
Lev-Aretz, Glynn Lunney, Ariel Porat, Guy Rub, Shai Stern, and Ofer Tur-Sinai for their
insightful suggestions and comments. I also thank the participants at the Annual IP
Scholars Conference (Cardozo, August, 2013); Faculty Seminar, Ono Academic College
(November, 2013); Law & Technology Colloquium, Faculty of Law, Tel-Aviv University
(January, 2014); and the WIPIP (Santa Clara, February, 2014) for their helpful suggestions
and comments. I am also grateful to Vera Eidelman, Jaunita John, Max Mishkin and their
colleagues on the Yale Journal of Law and Technology for their suggestions, comments
and assistance throughout the editing process. Finally, I thank the Zvi Meitar Center for
Advanced Legal Studies, Faculty of Law, Tel-Aviv University.
454
Published by Yale Law School Legal Scholarship Repository, 2014
Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5
16 YALE J.L. & TECH. 454 (2014)
2013-2014
I. INTRODUCTION ..................................................................................... 455

II. COPYRIGHTABILITY .............................................................................. 459
A. Elements of Copyright .................................................................... 459
B. A Brief History of Content-Based Restrictions in
Copyright Law................................................................................ 461
1. General Content-Based Restrictions ........................................ 461
2. Content-Based Restrictions on Illegality ................................. 463
III. THE CONSTITUTIONALITY OF CONTENT-BASED RESTRICTIONS ............ 468
A. Copyrights Constitutional Purposes ............................................. 468
B. Freedom of Speech ......................................................................... 470
C. Due Process ................................................................................... 472
IV. CONTENT-BASED RESTRICTIONS IN INTELLECTUAL PROPERTY ............ 472
A. Trademark Law .............................................................................. 473
B. Patent Law ..................................................................................... 478
V. EVALUATING CONTENT-NEUTRALITY IN COPYRIGHT LAW .................. 480
A. Drawbacks of Content-Based Restrictions .................................... 481
B. Benefits of Content-Based Restrictions .......................................... 483
VI. THE PROBLEM OF ILLEGAL WORKS....................................................... 484
A. Solutions for Illegal Works ............................................................ 486
1. Equitable Doctrines ................................................................. 486
2. Proposed Frameworks ............................................................. 490
VII. CONCLUSION ....................................................................................... 500
I.
INTRODUCTION
Imagine that two men brutally murder an innocent, defenseless

victim, using a hammer and a screwdriver, while another person films the
entire act. Shortly after the gruesome murder, this snuff video finds its way
to the Internet and is downloaded many times over a short period.1 Now
imagine that both murderers are sentenced to life in prison, while the
filmmaker receives a shorter prison term. Not long after, one of the
convicted murderers publishes a book that describes the murder, and the
other convicted murderer publishes an autobiography relying on his
infamous reputation to increase the books profits. The filmmaker files
Snuff films depict the actual murder of a person for the enjoyment of the audience, often
for the express purpose of increasing distribution and entertainment or financial
exploitation. See, e.g., Arnold H. Loewy, Obscenity, Pornography, and First Amendment
Theory, 2 WM. & MARY BILL RTS. J. 471, 476 (1993) (defining snuff films).
455
http://digitalcommons.law.yale.edu/yjolt/vol16/iss2/5
COPYRIGHTED CRIMES
multiple lawsuits against anyone who allegedly infringed his rights to the
video, highly profiting from them.2
In this article, I consider whether copyright should offer legal
remedies and protection for such works, which not only do not necessarily
benefit society, but are also capable of causing harm. As a normative
matter, should the law disregard or even enable profits from crimes?
Under current copyright law, illegal works3 are usually treated just
like other works: a work that is original and fixed in a tangible medium of
expression is entitled to copyright protection and eligible for registration.4
However, this interpretation of copyright law is relatively new. Until 1979,
many, if not most, courts interpreted copyright law to explicitly bar the
registration of illegal, immoral, fraudulent, or blasphemous works.5 Prior to
1979, most U.S. courts held that illegal works were not copyrightable and,
when the copyright holders attempted to assert their rights against
infringers, most courts found that the works connection to illegal activity
granted any alleged infringers a valid defense.6 Since 1979, however, the
question of whether copyright subsides in illegal works has become less
clear.7 While the Fifth and Ninth Circuits have held that all original works
2
A similar incident occurred in 2008 in Ukraine, though the convicted felons were not
enriched as a result. The infamous Dnepropetrovsk Maniacs, a pack of Ukrainian thrill
killers, filmed 3 Guys 1 Hammer, a snuff film that was released online and downloaded
many times. See Dnepropetrovsk Maniacs Murder Guy with Hammer and Screwdriver
(Real Snuff Video), BESTGORE.COM (Dec. 9, 2008),
http://www.bestgore.com/murder/dnepropetrovsk-maniacs-murder-guy-hammerscrewdriver-real-snuff-video; The Dnepropetrovsk Maniacs, CRIMINALMINDS,
http://criminalminds.wikia.com/wiki/The_Dnepropetrovsk_Maniacs (last visited Jan. 1,
2014).
3
I consider works of authorship illegal if: i) their content is criminal, such as snuff; ii)
they are directly linked to harmful crimes, including works that promote criminal activity;
or iii) they are otherwise legal works made by a felon that profit from the felons infamous
reputation. Although the last example is not illegal per se, I categorize it as such, as it
promotes the undesirable outcome of profit from criminal activity.
4
17 U.S.C. 102(a) (2012) (Copyright protection subsists, in accordance with this title, in
original works of authorship fixed in any tangible medium of expression, now known or
later developed, from which they can be perceived, reproduced, or otherwise
communicated, either directly or with the aid of a machine or device . . . .); 17 U.S.C.
101 (2012) (A work is fixed in a tangible medium of expression when its embodiment
in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent
or stable to permit it to be perceived, reproduced, or otherwise communicated for a period
of more than transitory duration. A work consisting of sounds, images, or both, that are
being transmitted, is fixed for purposes of this title if a fixation of the work is being made
simultaneously with its transmission.).
5
See infra note 54.
6
Id.
7
See infra Section II.B.2.
456
16 YALE J.L. & TECH. 454 (2014)
2013-2014
of authorship fixed in a tangible medium are copyrightable, whether

connected to illegal activity or not, district courts in the Second Circuit have
disagreed. Other circuits have not directly addressed this matter.8 Thus, the
laws current position on copyright for illegal works is uncertain. This
uncertainty should be explicitly addressed by Congress or, if a case finds its
way to the bench, by the Supreme Court.
Whether certain types of illegal works are undesirable for society
and whether their authors should profit from them is disputable.
Furthermore, even if the works are undesirable, it is unclear that copyright
law is the proper tool for censoring them, or that such censorship would be
constitutional. For example, the Constitution empowers Congress to enact
copyright laws in order to promote the progress of science and useful arts.9
Do illegal works promote these constitutional goals? On the other hand,
censorship-by-copyright could endanger other constitutional rights, first and
foremost First Amendment rights and possibly due process rights.10 At the
same time, can the law provide a more appropriate method for discouraging
such works? Finally, how will any such framework distinguish between
desirable and undesirable works?
In this article, I analyze copyright laws approach to content-based
restrictions on illegal works. I review the elements of copyright, address
historical content-based restrictions in copyright, and compare them to the
treatment of illegal works by other intellectual property (IP) laws. After
evaluating whether the law should limit copyright only to legal works, and
whether such a limitation would be constitutional, I argue that certain types
of illegality that harm individuals should not grant profits to the felon. I
base this position on the normative justification that criminals should not
profit from their crimes.11 After reviewing equitable doctrines and
propositions in current literature, I propose a new framework of illegal
copyright, which is designed to discourage criminal behavior and the
making of undesired works by eliminating profits from copyrighted
materials related to crime and reducing profits from a felon's infamous
reputation. Importantly, this framework also takes into account victims and
proposes a victim compensation element.
Id.
U.S. CONST. art. I, 8, cl. 8. This is discussed infra Section III.A.
10
See infra Section III.
11
See, e.g., Simon & Schuster, Inc. v. Members of N.Y. State Crime Victims Bd., 502 U.S.
105, 119 (1991) (The State likewise has an undisputed compelling interest in ensuring that
criminals do not profit from their crimes.).
9
457
COPYRIGHTED CRIMES
My proposed framework is threefold: First, the copyright of a work
that is directly and substantially connected to a crime12 will be expropriated
from the person who was convicted of, pled guilty to, or voluntarily
admitted to the crime (hereinafter the copyright felon) and will be
reallocated to a Crime Victims Board (CVB). If such material exists but
was never registered, the CVB will be able to register as its copyright
owner. Second, the CVB will be able to sue the copyright felon for any
existing profits from any work directly and substantially connected to the
crime. Third, the CVB will be able to sue the copyright felon for any other
profits he or she reaped from the notoriety he or she gained from the crime.
The CVB will deposit any profits obtained from the three provisions in an
escrow account, which the board will manage and use for the benefit of the
victim, her living relatives, and/or any victims of similar offences
throughout the country. To distribute the money, the CVB will publish legal
notices to potential victims of the crime.
The article proceeds as follows: Section II examines the elements of
copyrightability and provides a brief historical overview of content-based
restrictions in copyright law. Section III examines whether restrictions on
illegal content are constitutional. Section IV compares the censorship-bycopyright approach to other IP laws. Section V outlines the main benefits
and drawbacks of a content-neutral approach toward illegal works, and
evaluates whether such an approach is desirable. Section VI argues that
illegal works should not grant profits to their maker. For this matter, I
evaluate the current remedies available for a defense in an infringement
lawsuit and propose a new legal framework of illegal copyright. Finally,
Section VII summarizes the discussion and concludes that some criminals
should not profit from their misconduct, while their victims should
nevertheless be compensated from profits connected with the crime or the
criminal.
12
The set of relevant crimes can be defined by statute. It should include those crimes that
result in physical or emotional harm to an individual. In order to reduce differences in state
criminal prohibitions, the type of crimes should be set at a high level, i.e., conduct which is
considered a criminal offence in each state resulting in physical or emotional harm to an
individual.
458
16 YALE J.L. & TECH. 454 (2014)

II.
2013-2014
COPYRIGHTABILITY
A. Elements of Copyright
Copyright law grants protection to original works of authorship

fixed in any tangible medium of expression.13 As required by the Berne
Convention,14 registration is not a condition for copyright protection in the
United States.15 Copyright inheres in authorship and exists without
registration.16 However, copyright registration is necessary in order for the
author to accrue certain rights and benefits.17
After an applicant files for copyright registration,18 the Register of
Copyrights reviews the application and determines whether the material
deposited constitutes copyrightable subject matter.19 If the content is
eligible for copyright protection, the Register grants registration and issues
a certificate of registration to the applicant, which can be used as
presumptive evidence of a valid copyright.20 However, the Register can
refuse to register material that does not constitute copyrightable subject
13
See supra note 4. Works of authorship include literary, musical, dramatic, pantomime,
choreographic, pictorial, graphic, sculptural, audiovisual, and architectural works, as well
as sound recordings and motion pictures. 17 U.S.C. 102(a) (2012). Ideas, procedures,
processes, systems, method of operations, concepts, principles and discoveries are not
protected. 17 U.S.C. 102(b) (2012).
14
Berne Convention for the Protection of Literary and Artistic Works, art. 5 (2), July 24,
1971, 1161 U.N.T.S 3 (as revised in 1971) (The enjoyment and the exercise of these rights
shall not be subject to any formality; such enjoyment and such exercise shall be
independent of the existence of protection in the country of origin of the work.).
15
17 U.S.C. 40812 (2012). See generally, Aaron B. Rabinowitz, Criminal Prosecution
for Copyright Infringement of Unregistered Works: A Bite at an Unripe Apple?, 49 SANTA
CLARA L. REV. 793, 794, 798 (2009).
16
See supra note 14.
17
For example, in a civil action, registration or preregistration of a domestic work is a
necessary requirement in order to sue for copyright infringement and to claim attorneys
fees and statutory damages. See Erin Hogan, Survey, Approval Versus Application: How to
Interpret the Registration Requirement Under the Copyright Act of 1976, 83 DENV. U. L.
REV. 843, 843 (2006) (noting that certain rights and benefits accrue only upon copyright
registration.). However, registration is not required for cases involving foreign works, as
17 U.S.C. 411 (2012) only applies to a United States work. See DEPT OF JUSTICE,
PROSECUTING INTELLECTUAL PROPERTY CRIMES 21 (2013), available at http://
www.justice.gov/criminal/cybercrime/docs/prosecuting_ip_crimes_manual_2013.pdf. The
exception to 411 is an action brought in the event of a violation of the rights of attribution
and integrity of a visual art author, set out in 17 U.S.C. 106A (a).
18
17 U.S.C. 109 (2012).
19
Id. 410(a).
20
Id. 410.
459
COPYRIGHTED CRIMES
matter or if the claim is invalid for any other reason.21 Currently, the
Copyright Office will not base refusal for any other reason on a works
content.22 Instead, such refusal may only be based on information bearing
upon the preparation or identification of the work or the existence,
ownership, or duration of the copyright.23 Therefore, the Copyright Office
considers only whether the material falls within the subject matter24 of
copyright and whether it represents a sufficient amount of original, creative
authorship to justify registration.25
Thus, with the exception that works of authorship must be original, a
narrow interpretation of copyright law suggests that the determination of
whether or not a work is copyrightable is content-neutral. As long as the
work is original and fixed in a tangible medium of expression, it is
copyrightable and, after registration, that copyright can be enforced even if
the work is deemed illegal.26 In addition, the nature of a work does not
affect the rights or defenses that the Copyright Act provides. For example,
21
Id. 410(b).
In re Opinion of Attorney General of the United States, 183 U.S.P.Q. (BNA) 624 (1974);
2-7 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT 7.21 (16 ed. 2012)
[hereinafter NIMMER] (arguing that [a]lthough it has been said that this discretion includes
the power to refuse registration of seditious, libelous and obscene matter, the Copyright
Office has declared that it will not refuse registration on these grounds.).
23
17 U.S.C. 409(10) (2012); NIMMER, supra note 22, at 7.21.
24
Copyright protection subsists in original works of authorship fixed in any tangible
medium of expression, and include the following categories: (1) literary works; (2) musical
works, including any accompanying words; (3) dramatic works, including any
accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and
sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings;
and (8) architectural works. 17 U.S.C. 102 (2012).
25
The copyright examiner is mainly guided by the Code of Federal Regulations (37 C.F.R.
202 (2012)) and a manual of examining practices entitled the COMPENDIUM OF
COPYRIGHT OFFICE PRACTICES (LIBRARY OF CONGRESS COPYRIGHT OFFICE, II
COMPENDIUM OF COPYRIGHT OFFICE PRACTICES (1984)). In addition, each section of the
Examining Division has detailed practices relating to its subject matter. For a general
description of the available guidelines of the examiners, see Marybeth Peters, The
Copyright Office and the Formal Requirements of Registration of Claims to Copyright, 17
U. DAYTON L. REV. 737, 739-40 (1992). For more on copyright registration in the United
States, see Matthew J. Astle, Help! I've Been Infringed and I Can't Sue!: New Approaches
to Copyright Registration, 41 U. MEM. L. REV. 449 (2011); Christopher Sprigman,
Reform(aliz)ing Copyright, 57 STAN. L. REV. 485 (2004).
26
See Belcher v. Tarbox, 486 F.2d 1087, 1091 (9th Cir. 1973) (holding that [t]here is
nothing in the Copyright Act to suggest that the courts are to pass upon the truth or falsity,
the soundness or unsoundness, of the views embodied in a copyrighted work.);
FlavaWorks, Inc. v. Gunter, 689 F.3d 754, 755 (7th Cir. 2012) (stating that the prevailing
view is that even illegality is not a bar to copyrightability.).
22
460
16 YALE J.L. & TECH. 454 (2014)
2013-2014
an illegal parody could be considered fair use27 as long as it complies with

the Copyright Act.28 Because illegal works are copyrightable, copyright law
does not explicitly grant infringers of such works a defense on illegality
grounds.29
However, a broader interpretation of the law, applied by various
courts in the past, suggests that copyright was not always content-neutral.30
Thus, copyright does not necessarily have to be content-neutral and the
possibility of content-based protection should be further analyzed. Before
evaluating a content-neutrality approach to copyright, I first examine
copyright law's historical and current doctrines regarding content-based
restrictions.
B. A Brief History of Content-Based Restrictions in Copyright
Law
1.
General Content-Based Restrictions
Copyright law is hardly content-neutral.31 A closer examination of

the creativity and originality requirement reveals that a work must exhibit a
certain level of originality to warrant registration. Specifically, a work must
exhibit independent creation plus a modicum of creativity.32 Thus, the
requirement of originality (with its element of creativity) places a contentbased restriction on copyrightability. Another example of a content-based
restriction is that a creative work containing infringing material is not
27
The Copyright Act provides a fair use exemption to copyright infringement for
purposes such as criticism, comment, news reporting, teaching (including multiple copies
for classroom use), scholarship, and research. See 17 U.S.C. 107 (2012).
28
Regarding immoral works, see, e.g., Pillsbury Co. v. Milky Way Products, Inc., 215
U.S.P.Q (BNA) 124, *9 (N.D. Ga. 1981) ([t]he Copyright Act, however, does not
expressly exclude pornographic materials from the parameters of the fair use defense, and
the plaintiff offers no authority for this protection. The character of the unauthorized use is
relevant, but, in the court's judgment, the fact that this use is pornographic in nature does
not militate against a finding of fair use.).
29
See, e.g., Jartech, Inc. v. Clancy, 666 F.2d 403, 406 (9th Cir. 1982) (holding that
obscenity is not a defense to a copyright infringement claim).
30
This interpretation of copyright law is discussed infra Part II.B.2.
31
Ann Bartow, Copyright Law and the Commoditization of Sex 22 (May 11, 2011)
(unpublished manuscript), http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1825946
(nothing about copyrights is content neutral.).
32
See, e.g., Feist Publications, Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 345 (1991)
(noting that the requisite level of creativity in copyright law is extremely low); John Muller
& Co., Inc. v. N.Y. Arrows Soccer Team, Inc., 802 F.2d 989, 990 (8th Cir. 1986)
(confirming a refusal to register a logo which lacked the minimal creativity necessary to
support a copyright).
461
COPYRIGHTED CRIMES
copyrightable.33 Thus, for a work to be copyrightable, its content must be
examined, to some extent.
In addition to these implicit content-based restrictions, Congress has
imposed two explicit content-based restrictions since it enacted the first
copyright statute in 1790:34 First, in 1874, Congress passed a statute
limiting the copyrightability of engravings, cuts and prints only to those
works connected with the fine arts.35 However, the Supreme Court
narrowed that statutes scope in Bleistein v. Donaldson Lithograph Co,36
and Congress eventually repealed the statute and omitted the entire section
from the Copyright Act of 1909.37 Second, as interpreted by courts,
Congress limited the public performance right for dramatic compositions
only to performances designed or suited for public representation, thereby
imposing a moral restriction.38 However, Congress later removed this
content-based restriction.39
Because Congress has deliberately omitted or removed contentbased restrictions in the past, Congress seems to intend that copyright law
be content-neutral.40 Nevertheless, as history reveals, many courts have
reached the opposite conclusion, interpreting the Copyright Act to impose
content-based restrictions that limit copyright protection to legal works.
33
Bartow, supra note 31, at 19 (citing, as example of non-copyrightable works due to

infringing materials, Anderson v. Stallone, 11 U.S.P.Q.2d 1161 (1989) and Gracen v.
Bradford Exchange, 698 F.2d 300 (1983)). In addition, the fair use exemption also looks to
the nature of a work in determining whether the use is permitted. See 17 U.S.C. 107
(2012).
34
Act of May 31, 1790, 1st Cong., 2d Sess., 1 stat. 124 (1790).
35
Act of June 18, 1874, ch. 301, 3, 18 Stat. 78, 79 (1874); Mitchell Bros. Film Grp. v.
Cinema Adult Theater, 604 F.2d 852, at 855 n.4 (5th Cir. 1979) (summarizing the history
of content-restrictions in United States copyright legislation).
36
See Bleistein v. Donaldson Lithograph Co., 188 U.S. 239, 251 (1903) (stating that [i]t
would be a dangerous undertaking for persons trained only to the law to constitute
themselves final judges of the worth of pictorial illustrations, outside of the narrowest and
most obvious limits.).
37
Act of Mar. 4, 1909, ch. 320, 35 Stat. 1075-82 (1909).
38
Act of Aug. 18, 1856, 34th Cong., 1st Sess., 11 Stat. 138 (1856).
39
Act of July 8, 1870, ch. 230, 16 Stat. 198-217 (1870). I discuss this further in the next
section.
40
See Mitchell Bros., 604 F.2d at 854 (The history of content-based restrictions on
copyrights, trademarks, and patents suggests that the absence of such limitations in the
Copyright Act of 1909 is the result of an intentional policy choice and not simply an
omission.).
462
16 YALE J.L. & TECH. 454 (2014)

2.
2013-2014
Content-Based Restrictions on Illegality
As a matter of official copyright registration policy, for a long time,

illegal materials were not copyrightable if their nature was brought to the
attention of the examiner.41 The Copyright Office could refuse registration
if the examiner learned that the material tended to disturb the public peace,
corrupt morals, or libel individuals. As noted by the Copyright Register of
1941:
The Copyright Office is not an office of censorship of public
morals. In passing upon applications for registration of such
material, the only official interest to be exercised is in
deciding . . . whether or not the material is copyrightable and
hence registrable . . . Registration of such material [which
tends to disturb the public peace, corrupt morals, or libel
individuals, or is a seditious, blasphemous, immoral or
libelous production], when its nature is brought to the
attention of the examiner in the Copyright Office, is
refused.42
Not only could the Copyright Office refuse registration to illegal materials
before the 1976 legislation,43 but the Office also suggested that Congress
criminalize any attempt to register obscene, seditious, or blasphemous
material as a misdemeanor, carrying a fine, imprisonment, or both.44
However, even if the Office was permitted to refuse registration on
moral grounds, it was never obliged to do so. The Attorney General made
this clear in a 1959 decision,45 which stated that, while the Register could
deny registration to obscene works, defining obscene would involve
41
Examining the reasons behind the rapid change in registration policy is beyond the scope
of this article and should be further examined.
42
See 44th Annual Report of the Register of Copyrights, COPYRIGHT OFFICE 29 (1941),
http://www.copyright.gov/reports/annual/archive/ar-1941.pdf.
43
It should be noted that the official copyright registration policy regarding illegal works
was only applied after registration, when their nature was brought to the attention of the
examiner. Hence, illegal works were copyrightable to some extent at that time.
44
44th Annual Report of the Register of Copyrights, supra note 42, at 30 (It would seem
that, in the interests of public morals and public policy generally, the copyright law should
be amended so as to create an equally effective sanction against attempts to obtain
registration of obscene, seditious or blasphemous material in the Copyright Officein
other words, that such an attempt knowingly set on foot should constitute a misdemeanor,
carrying a fine, imprisonment or both.).
45
Walter J. Derenberg, Copyright Law, 35 N.Y.U. L. REV. 650, 654 (1960) (describing the
Librarian of Congress request from the Attorney General).
463
10
COPYRIGHTED CRIMES
substantial problems.46 Narrowly interpreting the Attorney Generals
instructions, the Office continued to limit its examination to statutory
formalities.47
Official policy, rather than just practice, changed in 1974, when the
Copyright Office reversed the 1941 policy and instructed examiners to limit
their determination to statutory formalities, without weighing the literary or
artistic merits of a work against the obscenity or immorality of the
material.48
The courts did not always agree with the Copyright Office on illegal
materials. Until 1979, courts considered illegal works to be noncopyrightable. In the 19th century, immorality, and possibly illegality, was
an explicit cause for barring registration. As noted above, when Congress
introduced a public performance right for a dramatic composition to
copyright law in 1856, it limited the new right to performances that were
designed or suited for public representation.49 California's Federal Circuit
Court interpreted the suited for public representation requirement to mean
that a work must be morally fit in order to obtain the right.50 This moral
restriction could also be applied to deem illegal works non-copyrightable.51
Though Congress later omitted the term suited from the legislation,52 the
46
41 Ops. Atty Gen. No. 73 (May 8, 1959) (The statute nowhere requires the Register to
refuse to accept such works for registration . . . I am of the opinion that the discretion
conferred upon the Register by the Copyright Law leaves him free to decide not to attempt
to refuse or deny registration of claims to copyright in works of the nature here
discussed.); Derenberg, supra note 45, at 654 (describing the 1959 Attorney Generals
opinion on the issue of obscenity in copyright registration).
47
Derenberg, supra note 45, at 654 (describing the Offices practice of limiting the
examination to the statutory formalities without examining the literary or artistic merits
from the viewpoint of obscenity or immorality of the material itself).
48
See Dan W. Schneider, Authority of the Register of Copyrights to Deny Registration of a
Claim to Copyright on the Ground of Obscenity, 51 CHI.-KENT L. REV. 691, 704 n.79
(1975) (describing the registration policy history of the Copyright Office and referring to
[l]etter from the U.S. Copyright Office to author, January 25, 1974.).
49
Act of August 18, 1856, supra note 36. At the time, the public performance right was
limited to dramatic works, and was expanded to musical compositions in 1897 (Act of
January 6, 1897, 44th Cong., 2d Sess., 29 Stat. 481 (1897)). For a general review of the
public performance right, see, e.g., Matthew S. DelNero, Long Overdue? An Exploration of
the Status and Merit of a General Public Performance Right in Sound Recordings, 51 J.
COPYRIGHT SOCY U.S.A. 473 (2004).
50
See Martinetti v. Maguire, 16 Fed.Cas. 920, 922 (No. 9173) (C.C. Cal. 1867).
51
See id. at 922 (the court noted that the exhibition of women in the Black Crook play is
grossly indecent and neither promotes the progress of science [n]or useful arts, and that
it is the duty of the court to uphold public virtue, and discourage and repel whatever tends
to impair it).
52
Act of July 8, 1870, ch. 230, 101, 16 Stat. 198, 214 (1870).
464
11
16 YALE J.L. & TECH. 454 (2014)
2013-2014
courts position on the copyrightability of illegal works remained

uncertain.53 In fact, until 1979, courts denied most illegal (and immoral)
works judicial remedies, instead holding that the works were not
copyrightable in the United States.54 This gave infringers a valid defense.55
In 1979, the Fifth Circuit took a different approach. In Mitchell
Bros. Film Grp. v. Cinema Adult Theater,56 the Fifth Circuit reversed the
district court ruling57 and held that a motion picture titled Behind the
Green Door was copyrightable, and its infringement enforceable, whether
or not it was obscene.58 This decision, governed by the 1909 Copyright
53
See Jennifer E. Rothman, Sex Exceptionalism in Intellectual Property, 23 STAN. L. POLY

REV. 119, 140 (2012) (copyright law denied copyright protection to works deemed, inter
alia, immoral, illegal, fraudulent, or blasphemous.).
54
Barnes v. Miner, 122 F. 480 (C.C.S.D.N.Y. 1903) (holding that a play entitled X-Rays
of Society, was not copyrightable, because it was immoral and lacked dramatic value and,
thereby, did not promote the progress of science and useful arts); Broder v. Zeno Mauvais
Music Co., 88 F. 74 (C.C.N.D. Cal. 1898) (holding that a song titled Dora Dean, is not
entitled to copyright by virtue of an indelicate and vulgar word in the lyrics); Richardson v.
Miller, 20 F. Cas. 722 (No. 11791) (C.C.D. Mass. 1877) (stating that immoral works are
not copyrighted); Bullard v. Esper, 72 F. Supp. 548 (N.D. Tex. 1947) (denying copyright
protection on grounds that copyright does not intend to protect illegality or immorality);
Hoffman v. le Traunik, 209 F. 375, 379 (N.D.N.Y. 1913) (stating that to be entitled to be
copyrighted, the composition must be original, meritorious, and free from illegality or
immorality); Martinetti, 16 Fed.Cas. (holding that a dramatic composition, which is
grossly indecent and calculated to corrupt the morals of people, is not copyrightable); Dane
v. M. & H. Co., 136 U.S.P.Q. 426 (N.Y. Sup. Ct. 1963) (holding that a choreographic
musical composition of striptease does not fall within the purview of the statute as a
production tending to promote the progress of science and useful arts); Shook v. Daly, 49
How. Pr. 366 (N.Y. Sup. Ct. 1875) (refusing to grant injunctive relief for an immoral play);
EATON S. DRONE, A TREATISE ON THE LAW OF PROPERTY IN INTELLECTUAL PRODUCTIONS
185 (1879) (The protection of the law will not be extended to a publication which is
obscene, or has a positive immoral tendency.).
55
More specifically, using obscenity as a defense in a copyright infringement suit
originated in England and was implemented in the United States as part of the English
common law tradition. It first appeared in a Chief Justice Eyre decision in Southey v.
Sherwood, 35 ENG. REP. 1006, 1007 (Ch. 1817). See Bonnie Wilkinson, Recent
Development, 46 FORDHAM L. REV. 1037, 1038-40 (1978) (describing the origins of the
obscene defense in English copyright).
56
Mitchell Bros. Film Grp. v. Cinema Adult Theater, 604 F.2d 852 (5th Cir. 1979).
57
Mitchell Bros. Film Grp. v. Cinema Adult Theater, No. 3-74-645, 1976 U.S. Dist.
LEXIS 13396, at *2-4 (N.D. Tex. 1976) (Jartech Inc. granted the Mitchell Brothers Film
Group the exclusive right to distribute and exhibit a pornographic movie titled Behind the
Green Door. The Mitchell Brothers Film Group sued Kenneth Bora, the operator of a
cinema adult theater that screened an unlawful copy of the film in his theater without
permission while seeking both injunctive relief and damages).
58
Mitchell Bros. Film Grp., 604 F.2d at 854.
465
12
COPYRIGHTED CRIMES
Act,59 marked a possible turn in the courts perception regarding the
copyrightability of illegal works. Mitchell Bros. interpreted copyright law to
no longer consider the nature of a work, unless Congress explicitly
addressed content restrictions in the Act, which it did not do in the 1976
reform.60 Moreover, during the Congressional discussions of the 1976 Act,
the House Judiciary Committee stated that it had no intention of including
any requirements of novelty, ingenuity, or aesthetic merit in the standard for
copyright protection, meaning that the Copyright Act deliberately avoided
content-based restrictions on illegality.61
In Jartech, Inc. v. Clancy, the Ninth Circuit followed the Fifths
Circuits Mitchell Bros. approach. In a 1982 opinion under the 1976 Act,
the Ninth Circuit held that the fact that content is obscene, which is usually
considered illegal,62 is not a defense to copyright infringement.63 Since then,
the Fifth and Ninth Circuits have maintained their view on this
matter, which seems to prevail in other circuits as well.64
However, in 1998, the Southern District of New York rejected and
criticized the Fifth and Ninth Circuits' approach. In Devil Films, Inc. v.
Nectar Video,65 the court stated:
59
Act of Mar. 4, 1909, Pub. L. 60-849, 35 Stat. 1075 (1909) (codified as amended at 17
U.S.C. 1-216 (1970)) (repealed 1976).
60
See 17 U.S.C. 102 (1976); Mitchell Bros. Film Grp., 604 F.2d at 863 (Congress has
not chosen to refuse copyrights on obscene materials, and we should be cautious in
overriding the legislative judgment on this issue.).
61
See Mitchell Bros. Film Grp., 604 F.2d at 855 (stating that [t]he legislative history of
the 1976 Act reveals that Congress intends to continue the policy of the 1909 Act of
avoiding content restrictions on copyrightability); H.R. REP NO. 1476, 94th Cong., 2d
Sess. 51 (1976).
62
See, e.g., 18 U.S.C. 1460 (2012) (prohibits possession with intent to sell, and sale, of
obscene matter on Federal property); 18 U.S.C. 1461(2012) (prohibits mailing obscene or
crime-inciting matter); 18 U.S.C. 1462 (2012) (prohibits importation or transportation of
obscene matters); 18 U.S.C. 1463 (2012) (prohibits mailing indecent matter on wrappers
or envelopes); 18 U.S.C. 1464 (2012) (prohibits the uttering of any obscene, indecent, or
profane language by means of radio communication); 18 U.S.C. 1465 (2012) (prohibits
the production and transportation of obscene matter for sale or distribution); 18 U.S.C.
1466 (2012) (prohibits engaging in the business of selling or transferring obscene
matter); 18 U.S.C. 1466A (2012) (prohibits obscene visual representations of the sexual
abuse of children); 18 U.S.C. 1467 (2012) (proscribes criminal forfeiture of obscene
material); 18 U.S.C. 1468 (2012) (prohibits distributing obscene material by cable or
subscription television).
63
Jartech, Inc. v. Clancy, 666 F.2d 403, 408 (9th Cir. 1982) (discussing the obscene nature
of adult movies in a copyright infringement case).
64
For example, the Seventh Circuit, without deciding on the matter, noted that the
prevailing view is that even illegality is not a bar to copyrightability. See FlavaWorks, Inc.
v. Gunter, 689 F.3d 754, 755 (7th Cir. 2012).
65
Devil Films, Inc. v. Nectar Video, 29 F. Supp. 2d 174 (S.D.N.Y. 1998).
466
13
16 YALE J.L. & TECH. 454 (2014)
2013-2014
It is far from clear that the Second Circuit will follow the
Fifth and Ninth Circuits in rejecting the argument that
obscene material is entitled to copyright protection Once
a court has determined that copyrighted material is obscene,
there seems no reason to require it to expend its resources on
behalf of a plaintiff who it could as readily be trying for a
violation of the federal criminal law.66
As this ruling only addressed an application for preliminary relief, the court
did not decide whether the obscenity of content could constitute a valid
defense against allegedly infringing the content. However, as the court
noted, the strong public policy against the distribution of obscene material
compels the conclusion that the court should not exercise its equitable
powers to benefit plaintiff.67 In another case, the district court repeated this
view.68
Thus, illegality is no longer a bar to copyright registration in the
United States.69 Although courts previously considered copyright to be
secondary to the publics right to moral protection,70 the Copyright Office
no longer seems to hold that view. However, it is still unclear whether
courts consider illegal works copyrightable under the current Copyright
Act. Although, circuit courts currently view copyright as neutral regarding
illegality, district courts views vary in different circuits.71 In addition,
certain circuits never directly addressed this matter;72 therefore, a Supreme
Court or Congressional clarification is much needed.
66
Id. at 176.
Id. at 176-77.
68
Next Phase Distrib., Inc. v. Does 1-27, 284 F.R.D. 165, 171 (S.D.N.Y. 2012) ([T]he
Court recognizes that, if the Motion Picture is considered obscene, it may not be eligible
for copyright protection.). But see Nova Prods., Inc. v. Kisma Video, Inc., No. 02 Civ.
3850(HB), 2004 WL 2754685, at *3 (S.D.N.Y. 2004) ([E]ven if the videos were
ultimately proven to be obscene, following the Fifth and Ninth Circuits holdings, this
would not be a defense to copyright infringement.).
69
See Belcher v. Tarbox, 486 F.2d 1087, 1088 (9th Cir. 1973) (stating that [t]here is
nothing in the Copyright Act to suggest that the courts are to pass upon the truth or falsity,
the soundness or unsoundness, of the views embodied in a copyrighted work).
70
Shook v. Daly, 49 How. Pr. 366, 368 (N.Y. Sup. Ct. 1895) (The rights of the author are
secondary to the right of the public, to be protected from what is subversive of good
morals.).
71
Christopher Thomas McDavid, I Know It When I See It: Obscenity, Copyright, and the
Cautionary Tale of the Lanham Act, 47 U. LOUISVILLE L. REV. 561, 567 (2009) (Since
1982, this issue has remained dormant in the federal appellate courts, but it has not been
entirely undisturbed at the district level.).
72
See, e.g., Liberty Media Holdings, LLC v. Swarm Sharing Hash File, 821 F. Supp. 2d
444, 447 n.2 (D. Mass. 2011) (noting that whether pornography is in fact entitled to
67
467
14
COPYRIGHTED CRIMES
Having discussed the current state of whether copyright law does
protect illegal works, I now turn to whether copyright law should. I consider
the normative justifications for content-based restrictions, as well as their
constitutionality.
III.
THE CONSTITUTIONALITY OF CONTENT-BASED RESTRICTIONS

A. Copyrights Constitutional Purposes
The Copyright and Patent Clause in the Constitution empowers

Congress [t]o promote the progress of science and useful arts, by securing
for limited times to authors and inventors the exclusive right to their
respective writings and discoveries.73 Presumably, the constitutional
purpose of copyright protection is therefore to protect all creative works,
regardless of their content, trusting the publics taste to reward creators for
useful works and to deny creators of useless works any reward.74
Therefore, the Constitution empowers Congress to enact copyright
law only as a means to promote the progress of science and useful arts.75
But do illegal works promote the progress of science and useful arts?76 This
protection against copyright infringement is a matter of first impression in the First Circuit
and is unsettled in many circuits); Villa v. Pearson Educ., Inc., No. 03 C 3717, 2003 U.S.
Dist. LEXIS 24686, at *7 (N.D. Ill. 2003) (while the court denied a motion to dismiss on
procedural grounds, it noted that whether the defendant would be liable for copyright
infringement on the basis that the mural is not protected by copyright law as it is illegal,
depends on the factual question of illegality. Thus, by this statement, the court recognized
that illegality could serve as a bar to copyrightability). For more on possible ramifications
of Villa v. Pearson Educ., Inc., see generally, Danwill Schwender, Promotion of The Arts:
An Argument For Limited Copyright Protection of Illegal Graffiti, 55 J. COPYRIGHT SOC'Y
U.S.A. 257 (2008).
73
U.S. CONST. art. I, 8, cl. 8. Here, science means knowledge and learning, as these
terms were synonymous in the eighteenth century. For more information on this matter, see
Edward C. Walterscheid, To Promote the Progress of Science and Useful Arts: The
Background and Origin of the Intellectual Property Clause of the United States
Constitution, 2 J. INTELL. PROP. L. 1, 51 (1994); Giles S. Rich, The Principles of
Patentability, 42 J. PAT. OFF. SOC'Y 75, 78-80 (1960); Karl B. Lutz, Patents and Science: A
Clarification of the Patent Clause of the U.S. Constitution, 32 J. PAT. OFF. SOCY 83, 84
(1950).
74
75
See Martinetti v. Maguire, 16 Fed. Cas. 920, 922 (No. 9173) (Cal. Dist. Ct. App. 1867)
([I]t expressly appears that [C]ongress is not empowered by the [C]onstitution to pass
laws for the protection or benefit of authors and inventors, except as a means of promoting
the progress of science and useful arts.).
76
However, Jennifer Rothman criticizes attempts to justify the exclusion of obscene works
from copyright protection by arguing that they are not promoting progress and therefore do
not fall within the Copyright and Patent Clause. Rothman argues that the language of the
468
15
16 YALE J.L. & TECH. 454 (2014)
2013-2014
question is not easy to answer. On the one hand, when people are harmed
during the making of a work or as a consequence of its distribution and
consumption, can the progress of knowledge really be promoted?77 On the
other hand, every work can promote some knowledge; for example, to
specialists in the field.78 Thus, promotion of knowledge can be achieved
even when harm is associated with a work, as they are not necessarily
linked and could be viewed as independent factors. Under these arguments,
all works are arguably beneficial for society and should be granted
copyright protection.
As mentioned, the Fifth Circuit held in Mitchell Bros. that the
protection of all writings, without regard to their content, is a
constitutionally permissible means of promoting science and the useful
arts.79 Hence, under the Fifth Circuit ruling, constitutionally, illegal works
should be just as copyrightable as other works.80 However, only a few
circuits have embraced this view; courts in other circuits have either not
decided on this matter or have disagreed with Mitchell Bros. Until Congress
or the Supreme Court clarifies the exact meaning of the constitutional
clause regarding content-based restrictions, 81 this controversy will persist.
clause is an explanation of purpose and not a mandate, and that the underlying goal of
copyright applies to the body of law, not to individual works. See Rothman, supra note 53,
at 155.
77
See, e.g., Bartow, supra note 31, at 2 (arguing that some pornographic works cannot
reasonably be construed as promoting progress or useful arts because people are harmed
during their production, or as a consequence of their distribution and consumption).
78
See, e.g., Sean J. Kealy, A Proposal for a New Massachusetts Notoriety-For-Profit Law:
the Grandson of Sam, 22 W. NEW ENG. L. REV. 1, 27 (2000) (When a criminal details his
experiences, society is benefitted because various specialists can gain a greater knowledge
of the criminal mind and its methods.).
79
80
Ronald L. Green, The Obscenity Defense to Copyright Revisited, 69 KY. L.J. 161, 174-75
(1980) ([I]n a modern context, the Constitution poses no bar to the granting of copyright
protection to the obscene or immoral work.).
81
Such clarification was offered by Christopher Thomas McDavid, arguing that Congress
should revise section 102(a) of the Copyright Act to state that [c]opyright protection
subsists, in accordance with this title, in original works of authorship fixed in any tangible
medium of expression, now known or later developed, from which they can be perceived,
reproduced, or otherwise communicated, either directly or with the aid of a machine or
device, without regard to the moral value of the work, and to clarify that under section 502
of the Copyright Act, which grants courts the discretionary right to grant temporary and
final injunctions of alleged violators of copyright, the content of the copyrighted material
is not to be taken into consideration under the court's discretionary powers. McDavid,
supra note 71, at 582.
469
16
COPYRIGHTED CRIMES
B. Freedom of Speech
The First Amendment states that Congress shall make no law . . .
abridging the freedom of speech.82 Imposing content-based restrictions on
copyrightability could endanger freedom of speech and, hence, be
unconstitutional.83 That said, the First Amendment does not protect all
speech. For example, defamation, incitement, obscenity, and child
pornography are generally not protected speech.84 Courts will examine
other content-based restrictions on speech to determine whether they arise
from a content-neutral or content-based regulation.85 Content-neutral
restrictions only need to meet an intermediate standard of scrutiny.86
However, content-based restrictions on copyrightability that endanger
freedom of speech are subject to strict scrutiny.87 Thus, if Congress were to
82
U.S. CONST. amend. I.

Although some works will fall into the commercial speech category, such as
advertisements, numbering systems, contracts and commercial labels, most works will not.
In order for speech to be commercial, it must combine four characteristics: it must do no
more than propose a commercial transaction; it may be characterized as an advertisement;
it must reference a specific product; and its disseminator must be economically motivated
to distribute the speech. See Bolger v. Youngs Drug Products, 463 U.S. 60, 66-67 (1983).
Therefore, I will generally refer to copyright as noncommercial speech. For more
information on copyright and commercial speech, see Alfred C. Yen, Commercial Speech
Jurisprudence and Copyright in Commercial Information Works, 58 S.C. L. REV. 665
(2007). For a general review of copyright and free speech, see COPYRIGHT AND FREE
SPEECH: COMPARATIVE AND INTERNATIONAL ANALYSES (Jonathan Griffiths & Uma
Suthersanen eds., 2005).
84
See, e.g., Ashcroft v. Am. Civil Liberties Union, 535 U.S. 564, 574 (2002) (noting that
obscene speech has long been held to fall outside the purview of the First Amendment);
Ashcroft v. Free Speech Coalition, 535 U.S. 234, 245-46 (2002) (The freedom of speech
has its limits; it does not embrace certain categories of speech, including defamation,
incitement, obscenity, and pornography produced with real children); New York v.
Ferber, 458 U.S. 747, 756 (1982) (recognizing that laws directed at the dissemination of
child pornography do not violate the First Amendment); Miller v. Cal., 413 U.S. 15, 23
24 (1973); Bartow, supra note 31, at 18 (arguing that [t]he First Amendment will only
protect pornography if it is not obscene or illegal for other reasons, i.e., if it contains
depictions of children.).
85
For more on the distinction between content-based and content-neutral regulations, see
KATHLEEN M. SULLIVAN & GERALD GUNTHER, FIRST AMENDMENT LAW 211-43 (2d ed.
2003).
86
Turner Broadcasting System, Inc. v. F.C.C., 512 U.S. 622, 642 (1994). Whether
copyright constitutes content-neutral or content-based speech regulation is disputable. For
more on this matter, see Neil Weinstock Netanel, Locating Copyright Within the First
Amendment Skein, 54 STAN. L. REV. 1 (2001) (arguing that copyright falls within a subcategory of content-neutral regulation requiring rigorous scrutiny).
87
See, e.g., Sable Commc'ns of California Inc. v. FCC, 492 U.S. 115, 126 (1989) (holding
that content-based restrictions must promote a compelling government interest and must be
83
470
17
16 YALE J.L. & TECH. 454 (2014)
2013-2014
impose copyright restrictions based on the content of the work, the

restrictions would have to be narrowly tailored to serve a compelling state
interest and be the least restrictive means available to further the articulated
interest.88
Examining the constitutionality of content-based restrictions in
copyright law under the First Amendment could lead to a problematic
outcome. A content-based restriction is unlikely to survive strict scrutiny.89
The state will likely be unable to assert an interest that requires the
suppression of free speech. On the other hand, the constitutionality of a
restriction against granting copyright to illegal works need not always
involve the First Amendment. In the case of obscene material, for example,
First Amendment protection should not apply. Thus, refusing copyright to
obscene works, and other creations that do not receive First Amendment
protection, should withstand constitutional challenges. Moreover, as I
further suggest, reducing the profitability of certain types of conduct (illegal
works), does not place restriction on speech, and therefore should be held
not to violate the First Amendment.
Imposing a general restriction against granting copyright to illegal
works will be an almost impossible task, constitutionally speaking.
However, a more limited restriction could be possible, as I discuss below.90
the least restrictive means of achieving that interest); Patrick M. Garry, A New First
Amendment Model for Evaluating Content-Based Regulation of Internet Pornography:
Revising the Strict Scrutiny Model to Better Reflect the Realities of the Modern Media Age,
2007 BYU L. REV. 1595, 1596 (2007) (stating that First Amendment doctrine requires that
courts subject any content-based speech regulation to strict scrutiny). For more on strict
scrutiny in the United States, see Adam Winkler, Fatal in Theory and Strict in Fact: An
Empirical Analysis of Strict Scrutiny in the Federal Courts, 59 VAND. L. REV. 793 (2006).
88
See, e.g., Ashcroft v. Am. Civil Liberties Union, 542 U.S. 656, 665-666 (2004) (finding
that the Child Online Protection Act (COPA), designed to regulate minors access to
harmful material on the Internet, is unconstitutional because it was likely to burden some
speech that is protected for adults while there were plausible, less restrictive
alternatives.); Reno v. Am. Civil Liberties Union, 521 U.S. 844, 844 (1997) (finding that
two provisions of the Communications Decency Act of 1996, indecent transmission and
patently offensive display, abridge freedom of speech and, therefore, unconstitutional);
Sable Commc'ns, 492 U.S., at 126 (holding that the government may regulate the content
of constitutionally protected speech in order to promote a compelling interest if it chooses
the least restrictive means to further the articulated interest).
89
See R.A.V. v. St. Paul, 505 U.S. 377, 382 (1991); Simon & Schuster, Inc. v. Members of
N. Y. State Crime Victims Bd., 502 U.S. 105, 115 (1991); Police Dept of Chicago v.
Mosley, 408 U.S. 92, 95 (1972).
90
See infra Section VI.A.2.
471
18
COPYRIGHTED CRIMES
C. Due Process
The Fifth Amendment states that no person shall be deprived of
life, liberty, or property, without due process of law.91 Restrictions against
granting copyright protection to illegal works should be able to satisfy this
due process requirement if they are sufficiently precise to not be considered
vague.92 The precision will likely have to be higher where free speech is
implicated.93 The concept of illegal works should be able to survive a
vagueness challenge; For example, it can be defined as specific acts
prohibited by the penal law.
To conclude, from a constitutional perspective, general contentbased restrictions in copyright will not be achieved easily. However,
restrictions on some forms of illegal activitieswhich are narrowly tailored
to serve a compelling state interest and are the least restrictive means
available to further the articulated interestcould pass the constitutional
challenge. I elaborate on possible content-based restrictions in Section
VI.A.2 below.
IV.
CONTENT-BASED RESTRICTIONS IN INTELLECTUAL PROPERTY
In order to evaluate justifications for keeping copyright law as

content-neutral as possible, an examination of other fields of IPnamely,
trademark and patent lawis required. Such an analysis indicates that
trademark laws approach to content-neutrality differs from that of both
patent and copyright law: materials can receive both patent and copyright
protection simply upon meeting general standards, while trademark law
prohibits the registration of immoral, disparaging, or scandalous marks.
91
U.S. CONST. amend. V. Due process also appears in the Fourteenth Amendment to the
Constitution. U.S. CONST. amend. XIV.
92
See, e.g., Grayned v. City of Rockford, 408 U.S. 104, 108 (1972) (It is a basic principle
of due process that an enactment is void for vagueness if its prohibitions are not clearly
defined.). However, the lack of precision is not itself offensive to the requirements of due
process. See Roth v. United States, 354 U.S. 476, 491 (1957) (The Constitution does not
require impossible standards; all that is required is that the language conveys sufficiently
definite warning as to the proscribed conduct when measured by common understanding
and practices . . . .) (quoting United States v. Petrillo, 332 U.S. 1, 7-8 (1947)).
93
Smith v. Goguen, 415 U.S. 566, 573 (1974) (holding that when a statute's literal scope is
capable of reaching expression sheltered by the First Amendment, the void for vagueness
doctrine demands a greater degree of specificity than in other contexts.); Llewellyn
Joseph Gibbons, Semiotics of the Scandalous and the Immoral and the Disparaging:
Section 2(A) Trademark Law after Lawrence v. Texas, 9 MARQ. INTELL. PROP. LAW REV.
187, 236 (2005) (applying void for vagueness as interpreted in Smith v. Goguen to
trademarks).
472
19
16 YALE J.L. & TECH. 454 (2014)
2013-2014
However, the differences between trademark and patent and copyright

lawincluding their connection to commercial speech and their
constitutional originscould justify these different approaches.
A. Trademark Law
Trademark law is not content-neutral.94 In 1905, Congress created a
content-based restriction in trademark, prohibiting the registration of
immoral or scandalous marks.95 A similar and slightly broader provision96
appeared in 1946, when Congress codified federal trademark law with the
passage of the Lanham Act.97 The Act prohibits registration of any
trademark that consists of or comprises immoral, deceptive, or scandalous
matter; or matter which may disparage or falsely suggest a connection with
persons, living or dead, institutions, beliefs, or national symbols, or bring
them into contempt . . . .98
Thus, trademark law, both at the federal level and in most states,99
prohibits the registration of immoral, disparaging, or scandalous marks.
Courts have denied trademarks for such marks,100 though their composition
94
For a thorough analysis of trademark law and content-neutrality, see Sonya Katyal,
Trademark Intersectionality, 57 UCLA L. REV. 1601 (2010).
95
Trademark Act of 1905, Pub. L. No. 58-489, 5, 33 Stat. 724 (1905) ([N]o mark by
which the goods of the owner of the mark may be distinguished from other goods of the
same class shall be refused registration as a trademark on account of the nature of such
mark unless such mark (a) Consists of or comprises immoral or scandalous matter . . . .).
For a definition of what constitutes as a trademark, see 15 U.S.C. 1127 (2012).
96
The 1905 Trademark Act did not include a prohibition on mark that disparage any person
or bring them into contempt or disrepute. See Kimberly A. Pace, The Washington Redskins
Case and the Doctrine of Disparagement: How Politically Correct Must A Trademark Be?,
22 PEPP. L. REV. 7, 23 n.99 (1994) (comparing the 1905 and 1946 trademark Acts in
connection to the prohibition against registration for immoral, scandalous, and disparaging
marks in the United States).
97
Trademark Act of 1946, Pub. L. No. 79-489, 60 Stat. 427 (1946) (named after
Representative Fritz G. Lanham of Texas).
98
Id. 2(a). For more information on section 2(a) of the Lanham Act, see Gibbons, supra
note 93.
99
In addition to federal protection, state registration provides trademark owners in the
United States with protection for their marks. See Pace, supra note 96, at 7, 23 n.100
(listing examples of state trademark legislation that prohibit registration for scandalous,
immoral or disparaging marks).
100
See, e.g., In re The Boulevard Entertainment, Inc., 334 F.3d 1336 (Fed. Cir. 2003)
(refusing to register 1-800-JACK-OFF and JACK-OFF as federal trademarks on the
ground that the marks consist of or comprise scandalous matter); In re Riverbank Canning,
95 F.2d 327 (affirming the refusal to register the mark Madonna as a trademark for
wines, on the ground that for such purpose the use of the word is scandalous); In re
McGinley, 660 F.2d, at 481 (affirming a refusal to register a Newsletter Devoted to Social
473
20
COPYRIGHTED CRIMES
differs case by case. However, precedent suggests that non-registrable
marks usually contain a reference to drugs, sex, religion, race, or
scatological imagery.101 When determining whether a mark constitutes an
immoral, deceptive, or scandalous mark, the context of the marketplace
matters.102 Prior decisions regarding similar marks are insufficient to
warrant the same finding in other cases.103
Constitutionally speaking, refusal to register an immoral or
scandalous mark was held not to abridge the First Amendment as no
conduct is proscribed, and no tangible form of expression is suppressed,
and as the refusal does not affect the right to use the mark.104 However,
and Interpersonal Relationship Topics and Social Club Services marks comprising a
photograph of a nude man and woman kissing and embracing in a manner appearing to
expose the male genitalia was considered scandalous); Harjo v. Pro-Football, Inc., 50
U.S.P.Q.2d (BNA) 1705 (T.T.A.B. 1999) (ordering the cancellation of seven registered
trademarks of the National Football Leagues Redskins, holding it to be pejorative and
offensive); In re Runsdorf, 171 U.S.P.Q. 443 (T.T.A.B. 1971) (affirming a decision that
BUBBY TRAP brassieres are scandalous). However, the District Court for the District of
Columbia later reversed this decision under the doctrine of laches (Pro-Football, Inc. v.
Harjo, 284 F. Supp. 2d 96, 132 (D.D.C. 2003)), a decision that was reaffirmed by the Court
of Appeals for the District of Columbia (Pro-Football, Inc. v. Harjo, 565 F.3d 880 (D.C.
Cir. 2009).
101
See Bartow, supra note 31, at 50-52 (listing examples of denied trademarks under 15
U.S.C. 1052(a), such as Cocaine for a soft drink and Pussy for an energy drink).
Courts usually refer to the dictionary definition of scandalous as [c]ausing or tending to
cause scandal; shocking to the sense of truth, decency, or propriety; disgraceful; offensive;
disreputable; Giving offense to the conscience or moral feelings; exciting reprobation;
calling out condemnation. See In re Riverbank Canning, 95 F.2d 327, 328 (C.C.P.A.
1938).
102
In re McGinley, 660 F.2d 481, 485 (C.C.P.A. 1981) (In determining whether
appellant's mark may be refused registration as scandalous, the mark must be considered in
the context of the marketplace as applied to only the goods or services described in the
application for registration. Whether or not the mark, including innuendo, is scandalous is
to be ascertained from the standpoint of not necessarily a majority, but a substantial
composite of the general public.). According to the United States Patent and Trademark
Office, to support a refusal on the ground that a proposed mark is immoral or scandalous,
the examining attorney must provide evidence that a substantial portion of the general
public would consider the mark to be scandalous in the context of contemporary attitudes
and the relevant marketplace. TMEP 1203.01 (8th ed. 2010).
103
Id. (citing In re Red Bull GmbH, 78 U.S.P.Q.2d. 1375 (T.T.A.B. 2006)).
104
See In re McGinley, 660 F.2d, at 484 (C.C.P.A. 1981); TMEP 1203.01 (8th ed. 2010).
Nevertheless, refusal to register a trademark could potentially jeopardize merchandising
revenues since the owner is not able to prevent the usage of the name and logo. See, e.g.,
Jack Achiezer Guggenheim, Renaming the Redskins (and the "Florida State Seminoles?):
The Trademark Registration Decision and Alternative Remedies, 27 FLA. ST. U. L. REV.
287, 287 (1999).
474
21
16 YALE J.L. & TECH. 454 (2014)
2013-2014
unlike copyright,105 trademarks are a form of commercial speech.106 In

order to assess whether regulation of commercial speech violates the First
Amendment, the Supreme Court instituted a four-step analysis:107 First, the
speech must be lawful and not misleading; second, the asserted government
interest must be substantial; third, the regulation must directly advance that
interest; fourth, the regulation cannot be more extensive than is necessary to
serve that interest.108 The Supreme Court held the term scandalous to be
sufficiently precise to satisfy due process requirements under the Fifth
Amendment.109 Even without registration, an immoral, deceptive, or
scandalous mark can be used by any company, but it will be denied federal
protection from unauthorized use.110
Hence, it is important to identify what differentiates trademarks
from copyright in order to evaluate why copyright does not explicitly refuse
to protect illegal (or immoral) content. Although copyright and trademark
are both types of IP, they possess fundamental differences:111 To name a
few, trademarks are part of a separate framework, originating from the
Commerce Clause, and are not governed by the Copyright (and Patent)
Clause;112 trademarks have characteristics of private goods, whereas
105
See supra note 83.

See Friedman v. Rogers, 440 U.S. 1, 11 (1979) (holding that trade names are
commercial speech). First Amendment protections did not apply to commercial speech
until a Supreme Court decision in 1976. Virginia State Bd. of Pharmacy v. Virginia
Citizens Consumers Council, Inc. 425 U.S. 748 (1976). Thus, as content-based restrictions
in trademark law were enacted prior to the extension of the First Amendment protections to
commercial speech, this legislation was not examined through the lens of constitutional
free speech. See, e.g., Valentine v. Chrestensen, 316 U.S. 52, 54 (1942) (We are equally
clear that the Constitution imposes no such restraint on government as respects purely
commercial advertising); Pace, supra note 96, at 36.
107
Central Hudson Gas & Elec. Corp. v. Public Serv. Comm'n, 447 U.S. 557 (1980).
108
Id. at 564.
109
See In re McGinley, 660 F.2d 481, 484-85; TMEP 1203.01 (8th ed. 2010).
110
See Bartow, supra note 31, at 55 ([M]arks that cannot be federally registered can still
be used in commerce, and that appears to keep this content based trademark registration
restriction within the bounds of constitutionality.).
111
See, e.g., David W. Barnes, A New Economics of Trademarks, 5 NW. J. TECH. &
INTELL. PROP. 22, 22 (2006) (arguing that according to conventional wisdom, trademark
law has no theoretical or practical connection to copyright and patent law); Katyal, supra
note 94, at 1613 (arguing that trademarks are part of a separate framework than
copyrighted and patented goods and concentrates on commerce rather than
communication).
112
In re Trade-Mark Cases, 100 U.S. 82, 93-94 (1879) ([A]ny attempt, however, to
identify the essential characteristics of a trademark with inventions and discoveries in the
arts and sciences, or with the writings of authors, will show that the effort is surrounded
with insurmountable difficulties.).
106
475
22
COPYRIGHTED CRIMES
copyrights have characteristics of public goods;113 unlike copyright law,
trademark law is not concerned with the dissemination of knowledge and
does not enrich the public domain;114 and trademarks are concerned with the
marketplace of goods while copyright mainly concerns the marketplace of
ideas.115
At the same time, regardless of whether it appears in the trademark
or the copyright context, a content-based restriction cannot abridge freedom
of speech, whether it is commercial or not. Refusal to register a mark can be
constitutional as long as the refusal does not affect the right to use the mark,
as the refusal does not proscribe any conduct or suppress any tangible form
of expressionit simply limits potential profits.116 Applying this test to a
works copyrightability, denying registration on any grounds appears to be
constitutional because such denial does not affect the right to use the work.
Yet, as mentioned, commercial speech does not enjoy the same
constitutional protection as non-commercial speech and copyright may
therefore require a more speech-protective standard.117
As noted above, differences between copyright and trademark law
could justify their different approaches to restrictions on illegal (and
immoral) content. However, it is not easy to evaluate justifications for
content-based restrictions in trademark law, as there is little evidence of
113
William M. Landes & Richard A. Posner, The Economics of Trademark Law, 78

TRADEMARK REP. 267, 276 (1988) ([A] proper trademark is not a public good; it has
social value only when used to designate a single brand.); Mark A. Lemley, Ex Ante
Versus Ex Post Justifications for Intellectual Property, 71 U. CHI. L. REV. 129, 143 (2004)
(arguing that in trademarks, there is no public goods problem for intellectual property to
solve.). But see David W. Barnes, Trademark Externalities, 10 YALE J.L. & TECH. 1, 5
(2007) (describing trademarks as mixed public goods); Glynn S. Lunney, Jr., Trademark
Monopolies, 48 EMORY L.J. 367, 462 (1999) (arguing that unlike a private good, using a
trademark, a public good, does not physically preclude the use of another good); Katyal,
supra note 94, at 1618 (arguing that currently trademarks take on characteristics that
resemble both public and private goods.).
114
Katyal, supra note 94, at 1615 (analyzing the distinctions between trademarks and
copyrights).
115
But see id. at 1617 (arguing that trademark law has been broadened to encompass other
expressive uses within the marketplace of ideas).
116
See In re McGinley, 660 F.2d 481, 484 (C.C.P.A. 1981) (With respect to appellant's
First Amendment rights, it is clear that the PTO's refusal to register appellant's mark does
not affect his right to use it. Holiday Inn v. Holiday Inn, Inc., 534 F.2d 312, 319 n.6, 189
USPQ 630, 635 n.6 (Cust. & Pat. App. 1976). No conduct is proscribed, and no tangible
form of expression is suppressed. Consequently, appellant's First Amendment rights would
not be abridged by the refusal to register his mark.).
117
See Ohralik v. Ohio State Bar Ass'n, 436 U.S. 447 (1978).
476
23
16 YALE J.L. & TECH. 454 (2014)
2013-2014
Congressional intent in their enactment.118 According to one theory, the

main motivation for the trademark law approach was to avoid government
approval of immoral marks.119 Another possible reason is public policyto
discourage the use of immoral marks.120 These justifications for contentbased restrictions could equally apply to copyright law because the
fundamental differences between the two intellectual property rights do not
affect these justifications. However, the fact that Congress explicitly
imposed a morality-based restriction in trademark law and abstained from
such a restriction in copyright law supports the opposite conclusion: that,
unlike its approach to trademark law, Congress intended for copyright law
to be presumably content-neutral.121
The existence of content-based restrictions in trademark law does
not justify implementing the same doctrine in copyright.122 Furthermore, the
fact that there are content-based restrictions in trademark law now does not
mean that there always will be. Economic considerations by themselves
118
In re Riverbank Canning, 95 F.2d 327, 328 (C.C.P.A. 1938) (stating that the legislative
history of the prohibition to register a scandalous matter does not aid the court in arriving at
Congress' intent of its enactment).
119
See Timothy R. Holbrook, The Expressive Impact of Patents, 84 WASH. U. L. REV. 573,
579 (2006) ([T]he primary reason for denying the trademark registration in this context,
therefore, is the potential that the government would be viewed as approving of such a
scandalous mark.). The Trademark Trial and Appeal Board rejected this argument, stating
that [i]n this case, as in others where the issue has been whether a mark is scandalous, we
have detected an undercurrent of concern that the issuance of a trademark registration for
applicant's mark amounts to the awarding of the U.S. Government's imprimatur to the
mark. Such a notion is, of course, erroneous. In re Old Glory Condom Corp., 26
U.S.P.Q.2d (BNA) 1216, 1220 n.3 (Trademark Trial and Appeal Board 1993). Yet, the
Trademark Trial and Appeal Boards lack of another justification and the fact that denial of
registration does not prevent the usage of a mark strengthen the assumption that the
government wishes to avoid a stamp of approval of such a mark. See Holbrook, supra
note 119, at 579 (making a similar argument, while citing GRAEME B. DINWOODIE & MARK
D. JANIS, TRADEMARKS & UNFAIR COMPETITION: LAW & POLICY 330-31 (2004)).
120
See Pace, supra note 96, at 22 (arguing that Congress reasoned the prohibition of
registering a mark due to public policy reasons in order to discourage their use, while
referring to Hearings on H.R. 4744 before the Subcomm. on Trademarks of the House
Comm. on Patents, 76th Cong., 1st Sess. 18 (1939) (statement of Rep. Thomas E.
Robertson)).
121
Green, supra note 80, at 171 (arguing that the specific exception of obscene trademarks
suggests that the same would have been done with copyright law had Congress felt it
desirable).
122
For criticism on trademarks content-based restrictions, see, e.g., Jasmine Abdel-Khalik,
To Live in In-"Fame"- Y: Reconceiving Scandalous Marks as Analogous to Famous Marks,
25 CARDOZO ARTS & ENT. L.J. 173 (2007); Todd Anten, Self-Disparaging Trademarks and
Social Change: Factoring the Reappropriation of Slurs into Section 2(a) of the Lanham
Act, 106 COLUM. L. REV. 388 (2006).
477
24
COPYRIGHTED CRIMES
without the laws interventioncould discourage use of offensive marks,123
as many customers would avoid purchasing an offensively-marked product
or service.124 Hence, the fact that trademark law imposes content-based
restrictions does not necessarily imply that copyright law should develop
accordingly.
B. Patent Law
Patent law is governed by Article I, Section 8 of the United States
Constitution, which empowers Congress to legislate a patent act [t]o
promote the Progress of Science and useful Arts.125 Patent law requires,
inter alia,126 that an invention prove to be useful before the Patent and
Trademark Office issues a patent for it.127 This is clearly a content-based
restriction,128 but the nature of useful is subject to a courts interpretation
and can change over time. In 1817, Justice Joseph Story held that, for an
invention to be useful in patent law terms,129 it cannot be frivolous or
injurious to the well-being, good policy, or sound morals of society.130
123
Pace, supra note 96, at 9 (arguing that it would be economically unwise for a company
to use an offensive trademark).
124
Kurt M. Saunders & Leonard J. Rymsza, The Scarlet Letter of Trademark Law: The Bar
to Registration of Immoral and Scandalous Trademarks, 14 S.L.J. 17, 27-28 (2004)
(arguing that allowing consumers to avoid purchasing of a product or services because it is
vulgar or unappealing could be an alternative to trademarks content-based restrictions).
125
U.S. CONST. art. I, 8, cl. 8.
126
See, e.g., 35 U.S.C. 102-103 (2012) (lists the conditions for U.S. patentability).
127
35 U.S.C. 101 (2012) ([W]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and requirements of this
title.). In addition, the patent statute provides for the issuance of design patents on
ornamental designs for articles of manufacture and plant patents on asexually reproduced
plants. See 35 U.S.C. 161, 171 (2012); Margo A. Bagley, Patent First, Ask Questions
Later: Morality and Biotechnology in Patent Law, 45 WM. & MARY L. REV. 469, 48284 (2003) (describing patent eligibility).
128
See Mitchell Bros. Film Grp. v. Cinema Adult Theater, 604 F.2d 852, 855 (5th Cir.
1979) (noting patent laws requirement that inventions be shown to be useful before a
patent is issued is a content-related restriction).
129
Subjected, at that time, to the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793), which uses
the phrase useful invention as an action on the case for the infringement of a patent-right.
130
See Lowell v. Lewis, 15 F. Cas. 1018, 1019 (C.C.D. Mass. 1817) (No. 8,568) (noting
that all that the law requires is, that the invention should not be frivolous or injurious to
the well-being, good policy, or sound morals of society. The word useful, therefore, is
incorporated into the act in contradistinction to mischievous or immoral.). See also
Bedford v. Hunt, 3 F. Cas. 37, 37 (C.C. Mass. 1817) (No. 1217) (limiting the definition of
useful to an invention that is be capable of use not prohibited by sound morals or policy);
Eric P. Mirabel, Practical Utility is a Useless Concept, 36 AM. U. L. REV. 811, 812-13
478
25
16 YALE J.L. & TECH. 454 (2014)
2013-2014
Thus, the court linked usefulness to morality. To exemplify this, the court
noted that inventions designed to poison people, promote debauchery, or
facilitate private assassination are not patentable.131
The idea that an invention, within the meaning of the patent statute,
must meet standards of morality was referred to as the moral utility
doctrine132 and was invoked in many cases for over 150 years.133 In recent
years, however, courts have abandoned this doctrine,134 and the current
interpretation of patent law suggests that it requires only that an invention
be put to a single lawful use, lacking moral examination.135 Hence,
(1987) (noting that the two early decisions on what constitutes useful defined the term as
a negative rather than a positive averment).
131
Lowell, 15 F. Cas, at 1019 ([A] new invention to poison people, or to promote
debauchery, or to facilitate private assassination, is not a patentable invention.); Martinetti
v. Maguire, 16 Fed. Cas. 920, 922 (No. 9173) (C.C. Cal. 1867) (holding that an invention
expressly designed to facilitate the commission of crime, however novel or ingenious,
could not be patented).
132
See Bagley, supra note 127, at 488-93 (describing the moral utility doctrine history).
133
For example, the utility requirement was employed by courts to invalidate inventions
used to defraud buyers and gambling device patents that were held to be immoral. See, e.g.,
In re Corbin, 6 F. Cas. 538, 540, 542 (C.C.D.C. 1857) (No. 3224) (upholding grant of
patent on artificial honey); Klein v. Russell, 86 U.S. 433, 445, 468 (1873) (affirming trial
court instruction that if the process patented cannot be made useful for any honest purpose
then the invention is not patentable); National Automatic Device Co. v. Lloyd, 40 F. 89
(N.D. Ill. 1889) (invalidating a patented toy automatic race course); Schultze v. Holtz, 82
F. 448 (N.D. Cal. 1897) (invalidating a patented slot machine); Rickard v. Du Bon, 103 F.
868, 873 (2d Cir. 1900) (denying a patent on an alleged fraudulent intent to make domestic
tobacco look like imported tobacco); Brewer v. Lichtenstein, 278 F. 512 (7th Cir. 1922)
(invalidating a patented lottery device); Meyer v. Buckley Mfg. Co., 15 F. Supp. 640, 641
(N.D. Ill. 1936) (denying a patent on a game of chance vending machine). In the global
realm, signed members of the Agreement on Trade-Related Aspects of Intellectual Property
Rights (TRIPs) are entitled to exclude from patentability inventions that pose a risk to the
public order or do not meet moral standards; however, this clause is not mandatory. See
Agreement on Trade-Related Aspects of Intellectual Property Rights, art. 27, Apr. 15,
1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869
U.N.T.S. 299, 33 I.L.M. 1197 (1994) 5 (Members may exclude from patentability
inventions, the prevention within their territory of the commercial exploitation of which is
necessary to protect ordre public or morality, including to protect human, animal or plant
life or health or to avoid serious prejudice to the environment, provided that such exclusion
is not made merely because the exploitation is prohibited by their law.).
134
Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1366-1367 (Fed. Cir. 1999)
(noting that the principle that inventions are invalid if they are principally designed to
serve immoral or illegal purposes has not been applied broadly in recent years.).
135
See John R. Thomas, An Examination of the Issues Surrounding Biotechnology
Patenting and Its Effect Upon Entrepreneurial Companies, CRS REPORT FOR CONGRESS 19
(2000) (noting that [t]he modern view is that so long as the invention may be put to a
single lawful use, it possesses utility within the patent statute.). However, in rare cases,
courts can make use of moral standards. See Thomas F. Cotter, Misuse, 44 HOUS. L. REV.
479
26
COPYRIGHTED CRIMES
immorality is no longer considered a restriction in United States patent
law.136 Nevertheless, the fact that an invention must be put to a single
lawful use before being eligible for registration could possibly bar patent
registration for illegal inventions. However, this content-based restriction is
set at a very low bar, as an invention that could be used for illegal purposes
is registrable as long as it can also be put to legal use. Thus, patent and
copyright laws seem to be aligned in the general conception that illegal
works are eligible for protection upon meeting basic general standards.
Whether this content-neutral approach is desirable requires further
evaluation.
V.
EVALUATING CONTENT-NEUTRALITY IN COPYRIGHT LAW
Whether copyright law should examine the content of a work is

questionable, especially with regard to illegal works.137 Works can be
original enough to meet the threshold of copyright law, but at the same
time, not benefit society or perhaps even harm it. The important question of
moral considerations in copyright law has received little attention in
academic literature. Scholars who address it usually deal solely with
questions of immoralitye.g., pornography and the sex industry, and/or the
possible illegality of obscene materialsbut do not provide a broader
examination of illegality.138 Hence, the copyrightability of illegal works
901, 933 n.155 (2007) (arguing that the moral utility doctrine could retain some vitality
regarding small class of inventions that would violate fundamental public policy).
136
See Holbrook, supra note 119, at 594 (arguing that the current United States patent
system is viewed as morally agnostic, i.e., it makes no judgments about the value of
individual patents).
137
See, e.g., Bullard v. Esper, 72 F. Supp. 548 (N.D. Tex. 1947) (holding that copyright
provisions were never intended to protect illegality or immorality).
138
There are a few suggestions regarding certain types of pornography that should be noncopyrightable. For example, Ann Bartow argues that copyright law should not grant
copyright protection in a situation of little originality and/or a high-risk level of harms
resulting from the distribution and consumption of a work. However, Bartow's suggestion
refers only to pornographic materials, and she does not consider the question of illegality
outside of the sex industry realm. See Bartow, supra note 31, at 37-38. For more academic
literature, see, e.g., Robert C. Summers, Constitutional Protection of Obscene Material
Against Censorship as Correlated with Copyright Protection of Obscene Material Against
Infringement, 31 S. CAL. L. REV. 301 (1958) (discussing copyright protection of obscene
material); Franklin Wallahan, Immorality, Obscenity and the Law of Copyright, 6 S.D.L.
REV. 109 (1961) (examining immorality and obscenity in copyright law); Jeremy Phillips,
Copyright in Obscene Works: Some British and American Problems, 6 ANGLO-AM. L.
REV. 138 (1977) (examining the legal reasoning courts give when refusing to protect
obscene works); Green, supra note 80 (reviewing and criticizing the obscene defense to
copyright infringement in the United States); Norman A. Palumbo Jr., Obscenity and
480
27
16 YALE J.L. & TECH. 454 (2014)
2013-2014
should be further examined to determine whether copyright law should be

content-neutral on this issue. In order to evaluate whether copyright
protection should exist without content considerations, I outline and
evaluate the main benefits and drawbacks of content-based restrictions in
copyright.
A. Drawbacks of Content-Based Restrictions
Imposing content-based restrictions in copyright could have several
negative effects, which maintaining content-neutrality could avoid. First,
content-based restrictions could impede the creation of certain types of
work;139 due to the uncertainty of whether a work will be considered
copyrightable, it might not be made in the first place.140 This might burden
authorswho will have to guess whether or not their work will be
copyrightableand society (which consume works)which will not be
able to differentiate between protected and unprotected work and fear the
possibility of infringement. Hence, content-based restrictions could have a
chilling effect on creations and free speech,141 which could result in creative
losses for future generations.142 Moreover, as a normative matter, copyright
Copyright: An Illustrious Past and Future?, 22 S. TEX. L.J. 87 (1981) (describing the
obscenity defense in both English and American copyright law); Kurt L. Schmalz,
Problems in Giving Obscenity Copyright Protection: Did Jartech and Mitchell Brothers Go
Too Far?, 36 VAND. L. REV. 403 (1983) (discussing copyright and obscenity in light of
recent courts rulings on this matter); Ann Bartow, Pornography, Coercion, and Copyright
Law 2.0, 10 VAND. J. ENT. & TECH. L. 799 (2008) (discussing copyright laws effect on the
creation and consumption of pornography); McDavid, supra note 71 (examining
immorality and obscenity in copyright and trademarks); Rothman, supra note 53
(reviewing trademark and copyright laws treating of sexual content); Nicole Chaney,
Cybersex: Protecting Sexual Content in the Digital Age, 11 J. MARSHALL REV. INTELL.
PROP. L. 815 (2012) (evaluating copyright protection in light of the Internet and the
growing demand for digital sexual content).
139
See, e.g., Schneider, supra note 48, at 719 (arguing that [d]enial of Registration could
work to discourage the development of the Arts.); Mitchell Bros. Film Grp., 604 F.2d at
856 (5th Cir. 1979) (citing Schneider).
140
Mitchell Bros. Film Grp., 604 F.2d at 856 (citing Schneider, supra note 48, at 719 and
arguing that a content-based restriction on the ground of obscenity could potentially
discourage authors, publishers and promoters of works).
141
See, e.g., id. (stating that the absence of content restrictions on copyrightability
indicates that Congress has decided that the constitutional goal of encouraging creativity
would not be best served if an author had to concern himself not only with the
marketability of his work but also with the judgment of government officials regarding the
worth of the work.).
142
See id. at 857 (arguing that denying copyright protection to works adjudged obscene by
the standards of one era would frequently result in lack of copyright protection (and thus
lack of financial incentive to create) for works that later generations might consider to be
481
28
COPYRIGHTED CRIMES
law is not designed to bar creativityrather, it aims to incentivize itbut
content-based restrictions could stifle the creation and dissemination of
expression.143
Second, content-based restrictions on registration could actually
increase the circulation of troubling materials to the public since more
people will be able to use the work without permission or paying fees.144
Under this assumption, illegal works, which are usually morally
undesirable, will be more harmful to society when not granted copyright
protection.
Third, content-based restrictions grant an undesired power to
copyright registrars: such restrictions would require that the registrars
decide whether a work is moral or legal enough for copyright protection,
which is beyond their current scope of creativity and originality. Because
the registrar is a government agent, the power to refuse registration on these
grounds could be viewed as a form of government censorship.145 In
addition, it is unlikely that every registrar will be able to apply the standard
of morality (related to, for example, obscenity); judges are better equipped
to determine the nature of a work. However, relying on courts to set a bar
will not necessarily solve the problem,146 as it would require judges to make
aesthetic evaluations, a role copyright law did not necessarily intend.147
not only non-obscene but even of great literary merit); Green, supra note 80, at 182
(arguing that without a clear line to determine what is obscene, the potential creator will
logically stay well clear of the line.).
143
Jim Gibson, Copyright as Censorship, THE MEDIA INSTITUTE (Dec. 22, 2009),
http://www.mediainstitute.org/IPI/2009/122209_CopyrightasCensorship.php (arguing that
copyright law is not designed to stifle the creation and dissemination of expression, but
rather to encourage it).
144
See Schneider, supra note 48, at 719 (noting that at least one commentator argued that
denial of registration will increase the circulation of material to the public, by removing the
right to sue for unauthorized publication and dissemination of copied material); Jeffrey M.
Ferguson, The Obscenity Defense Denied: The Rise of a Rational View of Copyright, 9 W.
ST. U. L. REV. 85, 95 (1981) (arguing that denying copyright protection encourages
wrongdoers to copy and disseminate obscene matter at will.); Rothman, supra note 53, at
156 (denying copyright protection and trademark protection to works and marks deemed
pornographic or immoral may actually increase their dissemination.).
145
Schneider, supra note 48, at 720 (arguing that registration denial would make the
Copyright Office a federal censor.).
146
Id. at 719 (arguing that there are difficulties involved in making a constitutionally
adequate determination of obscenity which suggest that courts, rather than the Copyright
Office, are the appropriate forum for this determination); Note, Can Intellectual Property
Law Regulate Behavior - A Modest Proposal for Weakening Unclean Hands, 113 HARV. L.
REV. 1503, 1504-05 (2000) (arguing that changing the rule of content neutrality in
copyright law will place a difficult burden on either the examiners of the Copyright Office
or on the judicial branch); Edward S. Rogers, Copyright and Morals, 18 MICH. L. REV.
482
29
16 YALE J.L. & TECH. 454 (2014)
2013-2014
Finally, as copyright is no longer domestic in nature, imposing

content-based restrictions on copyrightability could differentiate U.S.
protection from the protections provided elsewhere. That is, works that are
considered illegal will not be profitable under U.S. law but will be
profitable in any country that does not impose content-based restrictions or
that sets content-based restrictions at a lower level. Will works that are
considered illegal in the United States and legal in other countries be
granted protection only in the other countries? Will artists of such works
reallocate to publish only abroad?148 Although international conventions
and agreements that harmonize IP can partially resolve this issue,149 the
criminal laws of each country differ, making such harmonization highly
difficult, if possible at all.
B. Benefits of Content-Based Restrictions
On the other hand, there are several reasons why content-based
restrictions in copyright would improve the legal system. First, denial of
copyright protection to undesired works could de-incentivize their creation,
which can harm society, by removing economic incentives.150 Copyright
law can reduce crime by decreasing economic incentives for illegal
works.151 Moreover, some illegal works might have an additional negative
impact on society, for example by offending unwilling onlookers,152
390, 390 (1920) ([O]f course a work utterly useless and worthless would not promote the
progress of science and useful arts, but outside of obvious limits it is dangerous for persons
trained only in the law to pronounce upon such matters.).
147
See, e.g., Belcher v. Tarbox, 486 F.2d 1087, 1088 (9th Cir. 1973) ([T]here is nothing in
the Copyright Act to suggest that the courts are to pass upon the truth or falsity, the
soundness or unsoundness, of the views embodied in a copyrighted work. The gravity and
immensity of the problems, theological, philosophical, economic and scientific, that would
confront a court if this view were adopted are staggering to contemplate); Rothman, supra
note 53, at 158 ([C]opyright law has long discouraged judges from making aesthetic
evaluations.).
148
This scheme could also be beneficial at some level, as it disincentives the creation of
undesired works, at least in the U.S.
149
See, e.g., TRIPs, supra note 133.
150
On the economic motive of advertising and selling child pornography, see, e.g., New
York v. Ferber, 458 U.S. 747, 747 (1982) ([T]he advertising and selling of child
pornography provides an economic motive for and is thus an integral part of the production
of such materials, an activity illegal throughout the nation.).
151
On the other hand, see Green, supra note 80, at 183 (arguing that the existence of
copyright would not hinder criminal prosecutions.).
152
For example, exposure to an obscene work can be shocking to peoples sensibilities. For
justifications of obscenity regulations, see SULLIVAN & GUNTHER, supra note 85, at 121.
483
30
COPYRIGHTED CRIMES
inducing criminal conduct,153 eroding moral standards, and harming the
social fabric.154
Second, content-based restrictions on illegal works could aid in
compensating the victims of a crime. Reallocating the right to sue for
infringement from the offender to the victim or proxy of her choice gives
the victim an additional means of compensation from the crime or from the
additional harm caused by the work. I elaborate on this matter later.155
Third and finally, without content-based restrictions, granting
federal protection to illegal materials could be viewed as government
endorsement of such illegal works, suggesting that the government
approves such activity.156 Under this argument, because the government
should not advocate copyright protection for works that can harm public
policy, governments should instead restrict the registration of undesirable
works.
To conclude, there are both benefits and drawbacks to content-based
restrictions in copyright law. As a quantitative matter, the benefits
overweigh the drawbacks and copyright law should remain content-free, at
least to some extent. Nevertheless, qualitatively, the drawbacks of granting
copyright protection to illegal works overweigh the benefits of a contentneutrality approach, to some extent. Thus, in the following section, I
propose a modest solution to correct an injustice empowered by the current
alleged content-neutrality approach of copyright law.
VI.
THE PROBLEM OF ILLEGAL WORKS
Consider the following two examples of illegal works: spray

painting graffiti on a public building and filming child pornography. Graffiti
could be considered undesirable and is illegal in most statesparticularly
when it is connected to vandalism.157 However, this illegal act is
undesirable due to its destructive nature and not because of the scope of its
creativity. In other words, graffiti exemplifies a type of work the content of
which, if disconnected from criminal activity, is a legal form of free speech
and should be protected. The illegality arises not from the content of the
creation, but from the act of it.
153
For example, obscenity could induce criminal sexual conduct. See id. at 121.
See id. at 121-22.
155
See infra VI.A.2.
156
McDavid, supra note 71, at 562 (describing an argument that granting copyright
protection to obscene materials is de facto government endorsement of pornography to
feminist concerns for the welfare of exploited women.).
157
See, e.g., CAL. PENAL CODE 594(a)(1) (2012); GA. CODE ANN. 34.70 (2012). See
also Schwender, supra note 72 (describing illegal graffiti in the United States).
154
484
31
16 YALE J.L. & TECH. 454 (2014)
2013-2014
Now consider child pornography. Imagine that a photographer takes

an original pornographic photo of a child and registers it. After registration,
the photo finds its way to the Internet and is downloaded by various users.
Assume that all individuals who broke the law are convicted and
incarcerated.158 While serving time, the photographer files multiple lawsuits
for copyright infringement. Even if the photo is no longer available online,
the photographer can sue for copyright infringement and receive damages.
In this case, the convict can profit from her unlawful activity, while the
victim receives no compensation. Society does not benefit. The content is
criminal and should not be protected by law; instead, profits from the crime
should be minimized.
Though the child pornography example may be little more than a
hypothetical for a number of reasonsfor example, the author is unlikely to
register the work or sue infringers because she will likely fear criminal
charges159this hypothetical nevertheless raises important issues. Most
importantly, copyright law serves an expressive value for society.
Regardless of whether or not copyright protection incentivizes the creation
of such works or is ever even invoked in such situations, the law should not
condone such works as a normative matter. Copyright law should not
protect undesired works because the law should not aid in creating social
injustice; it should not be written in such a way that it could incentivize
criminal behavior.160 Thus, from a social perspective, Congress should not
grant copyright protection to undesirable works and should instead suppress
158
Under 18 U.S.C. 1466A(a) (2012) and 18 U.S.C. 1466A(b) (2012), these individuals
include anyone who knowingly [attempts to, conspires to, or does] produce, distribute,
receive, or possess with [or without] intent to distribute a visual depiction of any kind,
including a drawing, cartoon, sculpture, or painting, that depicts a minor engaging in
sexually explicit conduct and is obscene or depicts an image that is, or appears to be, of a
minor engaging in graphic bestiality, sadistic or masochistic abuse, or sexual intercourse,
including genital-genital, oral-genital, anal-genital, or oral-anal, whether between persons
of the same or opposite sex and lacks serious literary, artistic, political, or scientific value.
Thus, assume that both the rights holders and the end-users are convicted and incarcerated.
159
See Bartow, supra note 31 ([N]o holder of copyright in a work that unambiguously
constitutes child pornography has to date legally asserted copyrights or brought an
infringement action. Given the shadowy nature of the industry due to fear of arrest, it
seems unlikely that unambiguous works of child pornography in which real children are
depicted have even been registered with the Copyright Office); McDavid, supra note 71,
at 570 (arguing that a child pornographer will not likely register her work since registration
sends evidence of the felonious act to the federal government).
160
Yet, the fact that a convicted felon profits because copyright law allows her to, does not
contradict copyrights constitutional purposes. See McDavid, supra note 71, at 571
(Whether anyone reaps a reward from copyright is of no constitutional concern.).
485
32
COPYRIGHTED CRIMES
their creation and dissemination by blocking legal incentives. Congress
should strive to block profits from undesired works and undesired conduct.
A. Solutions for Illegal Works
As I discuss earlier, copyright law does not examine the nature of a
work before granting it protection. When illegal works are original and
fixed in a tangible medium of expression, they can automatically be
registered for copyright.161 However, whether the authors of these works
can benefit from legal remedies once infringement occurs remains an open
question. Since 1979, courts in the Fifth and Ninth Circuits have granted
remedies for infringement of obscene works,162 but courts in the Second
Circuit have not.163 Congress or the Supreme Court should clarify whether
illegal works are eligible for legal remedies. Until such clarification is
provided, courts should abstain from imposing content-based restrictions on
copyrighted works (based on illegality or immorality), as current law does
not explicitly grant such restrictions.
At the same time, current copyright law is not entirely contentneutral. As a result, adding further restrictions into copyright law should not
jeopardize the goals of copyright law. Accordingly, copyright law should
not incentivize illegal works. Criminal offenses that harm an individual are
undesirable for society and any knowledge gained from creative work
connected to the crime does not necessarily enrich the public domain. Thus,
when criminal offenders profit from their actions, it leads to injustice that
should not be permitted by the law. Accordingly, I propose a new
framework to address this problem. Before turning to my proposition, I
review existing and suggested methods of preventing crime profitability in
order to emphasize the need for such a proposal.
1.
Equitable Doctrines
American law contains many types of equitable doctrines that can be

invoked in some copyright lawsuits as a remedy or defense. Other forms of
IP also acknowledge certain remedies and defenses to infringement
lawsuits. In trademark, for example, the owner of a misleading mark is not
eligible for an injunction against the infringement of the mark.164 Similarly,
161
See supra Section II.A.

Mitchell Bros. Film Grp., 604 F.2d 852 (5th Cir. 1979); Jartech, Inc. v. Clancy, 666
F.2d 403 (9th Cir. 1982).
163
Devil Films, Inc. v. Nectar Video, 29 F. Supp. 2d 174 (S.D.N.Y. 1998).
164
See Worden & Co. v. California Fig Syrup Co., 187 U.S. 516, 23 S.Ct. 161, 188, 47
L.Ed. 282 (1903) (the California Fig Syrup Company used the trademark Syrup of Figs
162
486
33
16 YALE J.L. & TECH. 454 (2014)
2013-2014
a plaintiff who acquired a patent in violation of antitrust limitations on

patent pooling is not entitled to bring suit to enjoin another from using the
patent because such an injunction would support the antitrust violation.165
However, as I briefly analyze, the current equitable doctrines in copyright
are not applicable to most cases of illegal works infringement and,
therefore, cannot aid in solving the presented injustice.
I begin with the equitable remedy of unjust enrichment. The
undesired outcome of crime profitability could be resolved, at least
partially, by invoking the unjust enrichment rationale that [a] person who
is unjustly enriched at the expense of another is subject to liability in
restitution.166 Plaintiffs seeking recovery for unjust enrichment usually
must prove that the defendant benefited at their expense and that equity and
good conscience require restitution.167
If such a legal solution is available, is a new doctrine necessary? The
answer is simple. Even if unjust enrichment can resolve the problem of
crime profitability, it is uncertain that every court will accept such a claim,
especially regarding copyright infringement. For example, when an enduser unlawfully downloads a snuff film, but its right holder does not sue for
copyright infringement, the end-user is not enriched, at least not in the
monetary sense.168 Thus, it is unlikely that the victim of the snuff film (or
her proxy) will be able to sue the end-user for unjust enrichment from
copyright infringement since the end-user received no benefit at the
victims expense. Moreover, it is uncertain that every case of illegal
copyright will arise from a causal relationship between the wrongful act and
the enrichment, such as in the case of a murderer that sells a painting
unrelated to the crime. In addition, a well-crafted framework should also
contain legal remedies for crime victims who are unaware, unable, or
for a laxative that was not in fact a syrup of figs. The court held that when the owner of a
trademark applies for an injunction to restrain the defendant from injuring his property by
making false representations to the public, it is essential that the plaintiff should not in his
trademark or in his advertisements and business, be himself guilty of any false or
misleading representation, ; that if the plaintiff makes any material false statement in
connection with the property which he seeks to protect, he loses his right to claim the
assistance of a court of equity). Id. at 528; see also Shondel v. McDermott, 775 F.2d 859,
868 (7th Cir. 1985).
165
See Frank Adam Elec. Co. v. Westinghouse Elec. & Mfg. Co., 146 F.2d 165 (8th
Cir.1945); Shondel v. McDermott, 775 F.2d 859 (7th Cir. 1985).
166
See RESTATEMENT (THIRD) OF RESTITUTION AND UNJUST ENRICHMENT 1 (2011).
167
See, e.g., In re Mid-Island Hosp., Inc., 276 F.3d 123, 129 (2d Cir. 2002).
168
A possible counter argument could be that the end-user is enriched by receiving content
which she did not pay for.
487
34
COPYRIGHTED CRIMES
unwilling to sue the felon.169 In such cases, unjust enrichment is fairly
limited, and will not advance the important interest of compensating all
crime victims. Put differently, a new framework must prevent legal
uncertainty concerning what makes a particular enrichment unjust170 and
must ensure that the law addresses crime profitability and victims
compensation.
In addition to equitable remedies, three types of equitable defenses
can be invoked in copyright lawsuits: The first is unclean hands and applies
to a case in which a plaintiffs misconduct affect[s] the equitable relations
between the parties in respect of something brought before the court for
adjudication.171 This doctrine has been affirmed in copyright law172 but is
rarely invoked. When it has been invoked, it has met very specific
169
See, e.g., Kealy, supra note 78, at 23 (arguing that a law such as the Son of Sam Law, as
opposed to existing civil actions, is necessary to ensure that victims will be compensated
regardless of whether or not it occurs to them to bring a civil action against their
offenders.).
170
See, e.g., Ernest J. Weinrib, Structure of Unjustness, 92 B.U. L. REV. 1067, 1067 (2012)
(Even today, as we celebrate a new Restatement (Third) of Restitution and Unjust
Enrichment, uncertainty concerning what makes a particular enrichment unjust continues to
spawn both doctrinal and theoretical controversy.).
171
Keystone Driller Co. v. General Excavator Co., 290 U.S. 240, 245, 54 S.Ct. 146, 148,
78 L.Ed. 293, 297 (1933); see also Mitchell Bros. Film Grp., 604 F.2d at 863. Another
doctrine entitled in pari delicto (equally at fault), is a subdivision of the unclean hands
defense when opposing sides are equally wrong, court will not adjudicate their dispute as
awarding relief to the plaintiff would reward wrongdoing. Hence, applying the doctrine on
copyright infringement lawsuit could result in barring monetary fines and damages in the
event the plaintiffs work is equally at fault with the defendant. However, it is irrelevant in
this situation as long as a copyright does not intervene with the nature of a work, even if it
is considered morally wrong, the plaintiff is not at fault at all, thus, disabling the in pari
delicto doctrine. See generally, Norman C. Sabbey, Private Antitrust Suits: The In Pari
Delicto Defense, 10 B.C. L. REV. 172 (1968); Everet v. Williams, Ex. (1725) (known as
The Highwayman's Case, as described in Note, The Highwayman's Case, 9 L.Q.
REV. 197 (1893)); Schlueter v. Latek, 683 F.3d 350, 355-56 (7th Cir. 2012) (describing the
doctrine of in pari delicto).
172
For example, in 1903, the Second Circuit refused to punish a defendant who plagiarized
parts of two copyrighted encyclopedias into a separate work because the plaintiff had also
plagiarized anothers work. The court relied on the plaintiffs unclean hands (Edward
Thompson Co. v. Am. Law Book Co., 122 F. 922 (2d. Cir. 1903)). In 1915, the Circuit
Court of Appeals for the Fifth Circuit withheld protection for an instruction manual, stating
that he who seeks equity must present himself in court with clean hands. (Stone &
McCarrick, Inc. v. Dugan Piano Co., 220 F. 837 (5th Cir. 1915)). See also Brett
Frischmann & Dan Moylan, The Evolving Common Law Doctrine of Copyright Misuse: A
Unified Theory and its Application to Software, 15 BERKELEY TECH. L.J. 865, 881 (2000)
(discussing these two unclean hands doctrines applied in United States copyright law).
488
35
16 YALE J.L. & TECH. 454 (2014)
2013-2014
conditions173specifically, the plaintiffs transgression [must be] of

serious proportions and relate[s] directly to the subject matter of the
infringement action.174 Moreover, given that this doctrine only applies
when the wrongful acts in some measure affect the equitable relations
between the parties in respect of something brought before the court for
adjudication,175 the defendant must be personally injured by the plaintiffs
wrongful conduct.176 Because the defendant in an illegal copyright case
would likely be the individual who infringed the work and the plaintiff
would be the maker, this doctrine seems unlikely to serve as a valid defense
in such cases.177 Furthermore, since the Fifth Circuit rejected the doctrine in
1979reasoning that this doctrine adds a defense not authorized by
Congress178 and holding that any similar defense in an infringement action
is inappropriate179it is unclear whether the doctrine is still relevant in
copyright law. Thus, the equitable defense of unclean hands does not
provide the necessary mechanisms to adjudicate illegal works.180
The second equitable defense is of fraud or misconduct as a basis
for denying relief. This defense applies to: fraud perpetrated against the
Copyright Office; obtaining information regarding the nature of the
defendants work through unfair means; failure to disclose material
173
See NIMMER, supra note 22, 13.09 (arguing that the equitable defense of unclean
hands was recognized rarely, when the plaintiff's transgression was of serious proportions
and relates directly to the subject matter of the infringement action).
174
Id.
175
Keystone Driller Co., 297 U.S. at 245; Mitchell Bros. Film Grp., 604 F.2d.
176
See Lawler v. Gillam, 569 F.2d 1283, 1294 (4th Cir. 1978); Mitchell Bros. Film Grp.,
604 F.2d. at 863.
177
See, e.g., McDavid, supra note 71, at 569 ([t]he case of infringement of a copyright for
obscene materials where the defendant infringer is personally injured is difficult, if not
impossible, to imagine.).
178
Mitchell Bros. Film Grp., 604 F.2d. at 861. In addition, the court held that a prior
decision in related matters, i.e., Stone & McCarrick, Inc. v. Dugan Piano Co., 220 F. 837
(5th Cir. 1915), is inconsistent with later Supreme Court and Fifth Circuit rulings holding
that an equitable doctrine should not be applied in a way that will frustrate the purpose of a
federal statute). But see McDavid, supra note 71, at 569 (arguing that the applicability of
the unclean hands doctrine in copyright protection is still unknown, even after the Mitchell
Bros. ruling).
179
Mitchell Bros. Film Grp., 604 F.2d at 863 (obscenity is not an appropriate defense in
an infringement action, whether piggybacked on the unclean hands rubric or introduced in
some other manner.).
180
Dream Games of Ariz., Inc. v. PC Onsite, 561 F.3d 983 (9th Cir. 2009) (holding that
illegal operation of an otherwise copyrightable work does not deprive the work of
copyright protection, nor is it a defense to infringement, at least where the illegality did not
injure the infringer); Rothman, supra note 53, at 142 (arguing that todays dominant view
of copyright law is that equitable theories such as unclean hands do not prevent the
enforcement of copyright in such instances.).
489
36
COPYRIGHTED CRIMES
information; and deceivingly submitting false material information to the
Copyright Office.181 However, as these categories do not address most
illegal conduct, much like unclean hands, this defense will not serve as a
valid defense in most cases, and therefore it is also not a proper mechanism
for adjudicating illegal works.
The third equitable defense is copyright misusean attempt by the
right holder to extend the scope of her statutorily-granted but limited
monopoly, which could result in a violation of antitrust laws.182 When
raised successfully, the copyright misuse defense can bar a plaintiff from
prevailing in an action for infringement upon the misused copyright.183
However, as this doctrine is mostly based in anti-competitive rationales and
does not address the subject of most illegal works per se, it is, therefore,
also irrelevant to the problem presented.
To conclude, current equitable doctrines are incapable of untangling
all matters relating to illegal conduct. Thus, a new solution is required. I
now propose two frameworks. The first has previously been suggested in
the literature and applies compliance conditions to copyright registration.
The second, an original provision that I suggest for the first time, is to
design an illegal copyright framework. This framework would reduce
monetary incentives to commit crimes by ensuring that felons would not
profit from their crimes. Furthermore, it would de-incentivize the creation
of undesired works, and ensure victim compensation. As I discuss below,
the illegal copyright framework best protects the publics interests.
2.
Proposed Frameworks
The general outline of the two frameworks is similar: Every illegal

work of authorship, fixed in a tangible form, is eligible for copyright
protection, but is generally not eligible for any legal remedy, at least not for
the felon. The first solution, as proposed by one scholar, applies
compliance conditions to copyright registration.184 As suggested,
Congress should invalidate copyright registration when the author or her
agent has violated specific criminal laws in the immediate production of
181
See NIMMER, supra note 22, at 13.09; Note, supra note 146, at 1507 (describing the
inequitable conduct defense).
182
See generally, NIMMER, supra note 22, at 13.09; John Baker McClanahan, Copyright
Misuse as a Defense in an Infringement Action: Lasercomb America Inc. v. Reynolds, 49
WASH. & LEE L. REV. 213 (1992).
183
See Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 972 (4th Cir. 1990) (A successful
defense of misuse of copyright bars a culpable plaintiff from prevailing on an action for
infringement of the misused copyright.).
184
See Note, supra note 146.
490
37
16 YALE J.L. & TECH. 454 (2014)
2013-2014
the material for which the protection is sought.185 Under this proposal,
copyright registration will be accompanied by a notice that if the creator or
their agents should be discovered to have violated criminal laws (or a
statutorily defined subset) they will be forced to forfeit their copyright.
Upon convicting the owner for violating the underlying law, the
government could invalidate the copyright and registration, and could even
seize and destroy physical attributes of the copyrighted work.
This proposal deals with the problem internally to copyright, and to
some extent, resolves the problem of illegal copyright in a proper manner.
Implementing compliance conditions will de-incentivize the creation of
socially undesirable works. Moreover, compliance conditions draw a
relatively clear line that addresses the problem of uncertainty as to whether
works are copyrightable or not: The work of an author who has violated
specific criminal laws in the immediate production of the work is not
copyrightable.
However, this proposal is insufficient: Compliance conditions only
apply to violations of criminal law in the immediate production of the
material; thus, criminal acts that ensued after the immediate production of
the material will not invalidate registration. Consider the following
scenario: a convicted and imprisoned child molester decides to publish a
song for every child molested, describing the unlawful acts in non-obscene
language. Applying compliance conditions will not void registration of the
work, as no criminal act occurred in the immediate production of the
material.
In addition, these conditions apply to every criminal act, but should
be limited to criminal acts that directly harm another person, either
physically or mentally. Take graffiti for example. If someone sprays
original graffiti on the wall of a public building and is incarcerated,
compliance conditions will deprive her of copyright protection.186 Although
criminal law prohibits her actions, copyright law should not deprive her of
her creativity. If someone saw this graffiti and copied it, this artist should
enjoy the benefits of copyright law, and receive damages for the
infringement of her right. Moreover, forfeit of the copyright under these
conditions, which would bar any attempt to sue for copyright infringement
of the work, would also deny relief to the victim.
Thus, a proper solution should use copyright infringement damages
to aid in victim compensation. That is, the victim should not only be
185
Id. at 1503.
Some graffiti will not be protected by copyright because it does not comply with
copyright law requirements. Protected graffiti also poses various problems for copyright
protection. For instance, the artist may be anonymous, and graffiti gets painted over often.
186
491
38
COPYRIGHTED CRIMES
compensated for the criminal proceedings, but also for any harm that
resulted from the distributed work. In addition, the fact that a criminal work
is invalidated and even seized and destroyed by the government does not
erase the early distribution of the work. As a result, the undesired
criminal work could be further distributed even though it has been
invalidated.
Finally, as suggested by one scholar, because it is hypothetical that
felons will attempt to register a copyright of their work and risk conviction,
this proposition seems little more than a hollow victory, as the work
would have no value as it would be unmarketable.187 I, however, disagree
with this criticism. Even illegal works have a market, and although felons
are not likely to register an illegal work and risk conviction, such
registration is still plausible.188 Hence, the law should not advocate such
behavior.189
As the compliance conditions proposal is insufficient, I propose
another solution to resolve copyright laws perceived injustices
specifically, this solution would de-incentivize illegal creations and criminal
conduct by reducing profitability from the crime. Much like the
compliance conditions proposal, this proposal assumes that copyright
felons should not be awarded damages when their work is infringed.190
The normative justification of my proposal extends beyond possible
enrichment that criminals could get from infringement lawsuits for illegal
copyright. In fact, the perception that criminals should not profit from crime
already exists in other legislation that is partially related to copyright. In an
emerging need to correct injustice, some states have passed notoriety-for187
For this argument, see McDavid, supra note 71, at 574.

For example, family members of Albert DeSalvo, better known as the Boston
Strangler, claim that he only confessed to the murders to profit from book and movie
deals. See Tracey B. Cobb, Making a Killing: Evaluating the Constitutionality of the Texas
Son of Sam Law, 39 HOUS. L. REV. 1483, 1485 (2002) (citing Philip Hilts, Boston
Strangler: New Clues, New Mysteries: Forensic Team Finds Evidence that Could Prove
Albert DeSalvo Wasn't the Spree Killer, TORONTO STAR (Dec. 30, 2001)). Furthermore, the
infrequency of an undesired act should not provide a valid argument preventing regulation
against it. See, e.g., Kealy, supra note 78, at 21 (arguing that the mere infrequency of the
statute's use in the past does not provide a valid argument for keeping the statute off the
books.).
189
Yet, it could be more beneficial for society to grant copyright protection to such felons
since the incentive to register could aid in catching criminals. Thus, although those
criminals can receive damages, it could be less important than the possibility of
incarcerating them.
190
For a similar general argument, see Schmalz, supra note 138, at 430 (arguing that a
sound policy should deny financial rewards to obscene works that by definition are illegal
and violate national policy).
188
492
39
16 YALE J.L. & TECH. 454 (2014)
2013-2014
profit laws, usually referred to as Son of Sam laws.191 New York passed
the first Son of Sam law in 1977,192 providing, inter alia, that an entity
contracting with a person accused or convicted of a crime for the
production of a movie, book, magazine article, tape recording, or the like,
which reenacts, or describes the persons thoughts, feelings, opinions or
emotions regarding such crime, must pay any money owed to that person
under the contract to a Crime Victims Board instead.193 The money was
then deposited in an escrow account, and paid to victims who filed a claim
within five years of the date the escrow account was established.194 But the
Supreme Court struck down this law in 1991, holding that it violates the
First Amendment due to its significant overinclusiveness.195 In 1992, a
revised version of the law passed in New York, correcting the
overinclusivness of the first law, and like similar Son of Sam laws
throughout most of the country, still exists.196
A federal Son of Sam law also exists.197 The federal statute applies
to convictions of gathering or delivering defense information to aid a
foreign government, and to convictions for federal crimes resulting in
physical harm to an individual.198 The Crime Victims Fund in the Treasury
uses the profits from the depiction of the crime in a movie, book,
newspaper, magazine, radio or television production, or live entertainment
of any kind, or an expression of that defendants thoughts, opinions, or
191
Named after the serial killer David Berkowitz, nicknamed Son of Sam, who was
offered a relatively large sum of money for the rights to his story. See David L. Hudson Jr.,
Son of Sam laws, FIRST AMENDMENT CENTER (June 4, 2004),
http://www.firstamendmentcenter.org/son-of-sam-laws. For more information regarding
Son of Sam laws, see Mark A. Conrad, New York's New "Son of Sam" Law-Does It
Effectively Protect the Rights of Crime Victims to Seek Redress from Their Perpetrators?, 3
FORDHAM ENT., MEDIA & INTELL. PROP. L.F. 27, 31 (1992) (describing the need for the
first Son of Sam law).
192
N.Y. EXEC. LAW 632-a (McKinney 1982).
193
Simon & Schuster, Inc. v. State Crime Victims Bd., 502 U.S. 105 (1991) (describing the
Son of Sam law in New York).
194
See generally, Henry Cohen, The Son of Sam Case: Legislative Implications, CRS
REPORT FOR CONGRESS 1 (1998) (describing the New York Son of Sam Statute).
195
Simon & Schuster, 502 U.S. (striking down a law regulating the earnings of convicted
criminals who write tell-all books about their crimes, as it was inconsistent with the First
Amendments guarantee of freedom of speech and press).
196
N.Y. EXEC. LAW 632-a (McKinney Supp. 1994). For a full list of existing Son of
Sam laws, see FREEDOM FORUM,
http://www.freedomforum.org/packages/first/SonOfSam/index.htm (last visited Oct. 1,
2013).
197
18 U.S.C. 3681 (2012).
198
See generally Cohen, supra note 194 (describing federal and state Son of Sam
legislation).
493
40
COPYRIGHTED CRIMES
emotions regarding such crime, for victim compensation while remaining
amounts may be paid into the Fund.199 However, the federal Son of Sam
law is insufficient to deal with the perceived problem of copyright-related
crimes, as it only applies to federal crimes. Similarly, state Son of Sam laws
are insufficient, as they differ between states and do not exist in all states.
I propose introducing an illegal copyright framework to copyright
lawsimilar in essence to Son of Sam laws, but different in scope.
Generally, Son of Sam laws are an improper and insufficient mechanism to
cover all types of copyright-related crimes. They are improper, as they
depend on state legislators, when this problem should be dealt with on a
nation-wide scale. Thus, I propose an amendment to the Copyright Act,
based on the concept that criminals who have committed certain types of
criminal offenses should not be able to profit from their illegal copyright or
their reputation. This provision is threefold:
First, copyright registration will be accompanied by a notice that if
the creator or his/her agent was convicted of, pled guilty to, or voluntarily
admitted to a serious crime (or some statutorily defined subset)200 that
resulted in physical or emotional harm to an individual,201 and to which the
registered material is directly and substantially connected, they will forfeit
all of their rights to the material. These rights will be expropriated and
reallocated to a Crime Victims Board (CVB), which will become the
materials registered copyright owner.202 In cases of unregistered materials,
the CVB will be granted the ability to register the material and become its
copyright owner. In both cases, the copyright felon will be permitted to
make non-commercial, personal use of his previously-owned work.203
The CVB will publish legal notices to potential victims of the crime,
or their living relatives, and on request, will sue infringers on their behalf.
Any profits from the work, including from copyright infringement suits,
199
18 U.S.C. 3681 (2012); Cohen, supra note 194, at 4.

This framework does not apply to those simply accused of a felony, as the presumption
of innocence is important to protect. See, e.g., Coffin v. United States, 156 U.S. 432
(1895).
201
Including criminal offenses that cause emotional harm is also important. To illustrate,
consider a convicted felon who took naked pictures of a minor. In that case, the minor was
not necessarily physically harmed, but the emotional impact on her from the distribution of
the work should also be considered as entitled to compensation.
202
The duration of the copyright will remain the life of the original author plus 70 years (17
U.S.C. 302 (2012)).
203
It should be further clarified that any contractual obligations made by the felon prior to
conviction, pleading guilty to, or voluntarily admission to the serious crime, are void. The
CVB will carefully consider whether to sign new contracts, taking into account the victims
or her living relatives opinions.
200
494
41
16 YALE J.L. & TECH. 454 (2014)
2013-2014
will be deposited in an escrow account managed by the board. The board

will use the escrow for the benefit of and payable to the victim or her living
relatives. In addition, in cases where the victim or her living relatives do not
request the board to sue for copyright infringement, the board will be able
to file suit on their own discretion. Any profits from such suits will be
deposited in an escrow account managed by the board, which will use the
escrow for the benefit of and payable to the victims or her living relatives,
and for the compensation of any victims of similar offences throughout the
country. Whenever money is deposited in the escrow account, the board
will publish legal notices to potential victims of the crime.
Second, copyright law should contain an illegal copyright misuse
provision, which will give the CVB the ability to sue the copyright felon for
any previous profits from a work that is directly and substantially connected
to the crime.204 Any profits from the work, including from copyright
infringement suits, will be deposited in an escrow account managed by the
board. As in the first provision, the board will use the escrow for the benefit
of and payable to the victim or her living relatives, and for the
compensation of any victims of similar offences throughout the country.
Whenever money is deposited in the escrow account, the board will publish
legal notices to potential victims of the crime.
Third, under a second provision of the illegal copyright misuse
doctrine, the CVB be able to sue a copyright felon for (increased) profits
from works made by the felon, which, though not linked to the crime, did
garner more profits by virtue of the notoriety the felon gained from the
crime, such as income from a book that does not address the actual crime
but becomes more popular due to the criminals notoriety. In order to
estimate such additional profits, the court will determine the fair market
value of a similar work that has not gained value through crime-related
notoriety and deduct that from the profits.205 Any excess profit from the
work will be deposited in an escrow account managed by the board. As in
the first and second provisions, the board will use the escrow for the benefit
of and payable to the victim or her living relatives, and for the
compensation of any victims of similar offences throughout the country.
Whenever money is deposited in the escrow account, the board will publish
204
Although the accused could spend all profits before conviction, leaving nothing for the
escrow account, this could be solved by seizing all profits at the time of the indictment. The
profits could be returned if the accused is not found guilty.
205
It is noted that in some cases, determining the fair market value of a similar intangible
or tangible property could be highly problematic. For example, if the felon was already
famous prior to her misconduct, then the court must consider her former reputation in
estimating the increased value of the similar intangible or tangible property as if sold prior
to the commission of the crime.
495
42
COPYRIGHTED CRIMES
legal notices to potential victims of the crime. Figure 1 best illustrates the
illegal copyright framework:
Figure 1: The Illegal Copyright Framework
A Felons Work
Content is directly and

substantially connected
to the crime
Registered
Unregistered
Rights
reallocate
to CVB
A right to
register to
CVB
Copyright
infringement
suit
Content is not directly

and substantially
connected to the crime
Works value increased by the

notoriety gained from the
commission of the crime
Previous
profits
from the
work
CVB can sue

for additional
profits
Profits:
Victim or her living relatives on her
behalf & crime-related victims of
similar offences
If designed correctly, this proposal can be held constitutional under

the First Amendment. First, as discussed in Section III.B, the First
Amendment does not protect some forms of speech. Although the scope of
unprotected speech is limited, a broad interpretation of Supreme Court
decisions indicates that permitted restrictions on the content of speech can
apply to speech that is of such slight social value as a step to truth that any
benefit that may be derived from [it] is clearly outweighed by the social
496
43
16 YALE J.L. & TECH. 454 (2014)
2013-2014
interest in order and morality.206 As my proposal targets the profits of

specified felons, the social interest in order and morality clearly outweighs
any slight social value that would be lost from the restriction. Therefore, the
First Amendment should not apply to the works at issue here.
Second, this proposal does not restrict speech, but rather reduces the
profitability of certain types of conduct. It disincentives crime, not protected
speech. Much like current restrictions on trademark registration, this
proposal would still allow the works to exists, just in a less profitable
form.207 Therefore, this proposal should be held not to violate the First
Amendment as it does not restrict speech.208
Third and finally, even if my proposal is deemed to place a
restriction on speech, it should be considered content-neutral as it
regulates speech without regard to the viewpoint conveyed, with only an
incidental effect on speech due to a possible chilling effect to create.
Therefore, it will only need to survive intermediate scrutiny.209
Even if my proposal is considered to place a content-based
restriction on speech, it may be able to pass the almost impossible strict
scrutiny examination. Although content-based restrictions on speech are
presumptively invalid, and are unlikely to survive in light of past Court
decisions,210 my proposal could survive as it serves a compelling state
interest and it is narrowly drawn to achieve that end.
My proposal serves two compelling interests: first, to disincentivize
criminal behavior by ensuring that felons do not profit from their crimes or
their reputation, and second, to ensure that victims, or their family, receive
compensation. Thus, as the proposal serves compelling state interests, it can
survive strict scrutiny as long as it is neither under- nor overinclusive.
For the framework to avoid underinclusiveness, it must not apply
only to the speech of the crime. As a result, a provision that deprives the
criminal of any income from copyright infringement cases is not enough, as
it would only apply to the speech of the crime. Hence, the provision should
also include any increased profits from any other work related to the felons
206
See R.A.V. v. St. Paul, 505 U.S. 377, 382-83 (1991) (citing Chaplinsky v. New
Hampshire, 315 U.S. 568, 572 (1942)).
207
For more on trademarks content-restrictions justifications, see supra Section IV.A.
208
For a similar argument on possible free-speech argument against imposing compliance
conditions, see Note, supra note 146, at 1509. But see Simon & Schuster, Inc., 502 U.S.,
at 115 ([a] statute is presumptively inconsistent with the First Amendment if it imposes a
financial burden on speakers because of the content of their speech.).
209
See supra note 86.
210
See supra Section III.B.
497
44
COPYRIGHTED CRIMES
increased notoriety (and not to the crime).211 This provision should be
sufficient to avoid underinclusiveness while only having an incidental effect
on speech for which restrictions must meet a less stringent standard.212
For the framework to avoid overinclusiveness, it should not apply
where it does not advance legitimate government objectives. The law
should not apply to every expression of a criminal, but rather only to any
expression that could further harm the victim or her living relatives and to
works that became more profitable due to the criminals notoriety. If a
convicted serial killer receives fair market value royalties for her pre-crime
work, without any profit boost due to reputation, she should be entitled to
all of that income. However, if the royalties increase due to her reputation,
she should not profit from that increased value. Moreover, if the same serial
killer publishes a book that describes the murder of every victim, she should
not enjoy profits from her work, nor from a lawsuit challenging copyright
infringement of her work, as the victims living relatives are likely to be
further harmed. It is important to de-incentivize the creation of such
undesired works by reducing their profitability.
In addition, the law should apply to works related to acts defined as
crimes in the penal law (including federal crimes), or any other acts
mentioned in the consolidated laws of the state that result in physical or
mental harm to an individual. The mandatory harm requirement is essential
to fulfilling the state interest of compensating the victims,213 and is also
important to ensure that the law is not overinclusive and still promotes
copyright laws goals. For example, original graffiti should not fall within
the framework if it does not harm an individual, as it promotes the progress
of knowledge.
One significant challenge to my framework is that, once a court
finds that a work harms another individual, that work will not be protected
even if it undoubtedly promotes knowledge. Imagine, for example, that the
211
A similar provision exists in some states in relation to tangible property. See, e.g., Texas
Son of Sam statute (TEX. CRIM. PROC. CODE ANN. 59.06(k)(2) (Vernon Supp. 2002)),
which covers the value of tangible goods owned by a criminal that is increased due to the
notoriety of the criminal; see also California, Cal. Civ. Code. 2225 (2005); Cobb, supra
note 188, at 1506-07 (analyzing Texas Son of Sam statute).
212
See Cohen, supra note 194, at 6 (describing the underinclusiveness requirement and the
possible incidental effect on speech); United States v. OBrien, 391 U.S. 367, 383 (1968).
213
See, e.g., Kealy, supra note 78, at 16 (arguing that a narrowly tailored notoriety-forprofit statute should define the "defendant" to focus only on those offenders who have an
obligation to compensate victims). Although broadly defining the framework to refer to
any crime, regardless of the harm to an individual, could also be desired in order to prevent
profitability of other undesired works that do not harm individuals, it will nevertheless be
overbroad and encompass works, which are desired for society.
498
45
16 YALE J.L. & TECH. 454 (2014)
2013-2014
founder of al-Qaeda, the late, infamous Osama bin Laden, was convicted
and wrote a book about the 9/11 attacks. Although most people will highly
disapprove of his unlawful actions, some would nevertheless be intrigued to
learn more about the attacks. This information could also be very beneficial
to government agencies in their fight against terror. Thus, his book could
benefit society, although it could also harm the 9/11 victims and their
relatives. Alternatively, works of convicted felons such as Mohandas
Karamchand Gandhi (Mahatma)214 and Nelson Mandela could also
benefit society.215 Should copyright law de-incentivize the creation of such
works?
My proposal does not suggest that such works should not exist: it
would not make the creation and dissemination of such works illegal;
rather, it would prevent or reduce their profitability.216 The reduced
profitability is not likely to pose a real bar to their production as, in such
cases, the financial incentive will probably not be the sole incentive to
create.217
A few more challenges arise from my proposition. For example,
expropriating an illegal work could seemingly lead to the undesired
outcome of increased distribution as the work will be free of charge.
However, as the CVB will become the materials registered copyright
owner, deterrence from infringement lawsuits will remain. Another concern
is that of the differences between states penal codes. Since criminal
offenses differ between states, the framework will have difficulty to
determine a clear set of offences. This would be resolved by forming a list
of nation-wide offences that result in physical or emotional harm to an
individual, without considering differences between the volumes of
sanctions. Murder, rape and assault, for example, are criminal offenses in all
states, while only differences in the level of sanctions exist. Therefore,
types of offences should be determined and set nation-wide.
214
On March 18, 1922, a British colonial court convicted Gandhi of sedition after a protest
march led to violence and sentenced him to six years imprisonment. See On This Day:
Gandhi Imprisoned for Civil Disobedience, FINDINGDULCINEA (Mar. 18, 2011, 06:00 AM),
http://www.findingdulcinea.com/news/on-this-day/March-April-08/On-this-Day--GandhiImprisoned-for-Civil-Disobedience-.html.
215
In 1964, Nelson Mandela was sentenced to life in prison for sabotage. See 1964: Nelson
Mandela Jailed for Life, BBC,
http://news.bbc.co.uk/onthisday/hi/dates/stories/june/12/newsid_3006000/3006437.stm
(last visited Jan. 15, 2014).
216
It is noted that the CVBs discretion on the distribution of illegal works is problematic,
and could endanger free speech. Therefore, the CVB decisions should be public and subject
to judicial review.
217
There could be many different incentives to create, e.g., recompense or fame. See Kealy,
supra note 78, at 27-28 (providing such examples of incentives to create).
499
46
COPYRIGHTED CRIMES
Another possible challenge is that creating works could aid in the
rehabilitation of a felon, and the framework could erode that right by
reducing the incentive to create. By the same token, the framework might
harm falsely accused criminals by preventing them to tell their story. To
address such concerns, the framework could be revised to include a limited
profitability incentive. For example, the framework could apply only for a
limited time, enabling felons to profit from their crime after a period set by
the law.218 In that way, after a considerable amount of time, felons could
create their work, tell their story, and even profit from their work, while
lowering profitability levels of the work.
Naturally, the proposed framework will not eliminate the
profitability of all crimes nor cease the dissemination of all undesired
works. But it is nonetheless an important step toward making crimes less
profitable and Congress should consider enacting it.
VII.
CONCLUSION
Though copyright law should generally adopt a content-neutral

approach, it should also adopt an illegal copyright framework to deincentivize the creation of illegal works. An offender should not profit from
harming an individualeven when creative work is involved.
A proper framework would strike a balance between ensuring the
continued promotion of knowledge through creative works like original
graffiti and correcting the injustice of profits from illegal works, like
snuff films. Incorporating a three-fold illegal copyright framework into
the Copyright Act would strike such a balance: First, the copyright of a
work that is directly and substantially connected to a crime would be
reallocatedor originally registeredto a CVB. Second, the CVB would
be able to sue the copyright felon for any previous profits from any work
that is directly and substantially connected to the crime. Third, the CVB
would be able to sue the copyright felon for any profits that he or she gained
through the notoriety achieved from the crime. The CVB would deposit any
profits obtained from the three provisions in an escrow account, which the
board would use to compensate the victim, her living relatives, and/or any
victims of similar offences.
218
It could be important to keep some financial incentive to create as these works can also
benefit society, and as the publication of these works is necessary to compensate victims.
For example, some Son of Sam statutes permit the recovery of a percentage of the profits
from the crime, after a specified period. For a list of such state statutes, see Kealy, id. at 2728, n.164. I thank Ariel Porat for suggesting this important note.
500
47
16 YALE J.L. & TECH. 454 (2014)
2013-2014
This illegal copyright framework is greatly needed to correct an

injustice in the legal system. The system should not encourage criminals to
create societally undesirable or harmful works, or enable them to in any
way profit from their misconduct. Even if such profits are relatively rare
or even hypotheticalnormatively, the law has a responsibility not to
advocate such undesirable behavior. Currently, crime pays. Congress should
change that as soon as possible.
501
48

Copyrighted Crimes - The Copyrightability of Illegal Works

Cargado por

Información del documento

Título original

Derechos de autor

Formatos disponibles

Compartir este documento

Compartir o incrustar documentos

Opciones para compartir

¿Le pareció útil este documento?

¿Este contenido es inapropiado?

Copyright:

Formatos disponibles

Copyrighted Crimes - The Copyrightability of Illegal Works

Cargado por

Copyright:

Formatos disponibles

Yale Journal of Law and Technology

Copyrighted Crimes: The Copyrightability of

Follow this and additional works at: http://digitalcommons.law.yale.edu/yjolt

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

I. INTRODUCTION ..................................................................................... 455

Imagine that two men brutally murder an innocent, defenseless

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

of authorship fixed in a tangible medium are copyrightable, whether

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

Copyright law grants protection to original works of authorship

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

an illegal parody could be considered fair use27 as long as it complies with

General Content-Based Restrictions

Copyright law is hardly content-neutral.31 A closer examination of

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

Bartow, supra note 31, at 19 (citing, as example of non-copyrightable works due to

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

Content-Based Restrictions on Illegality

As a matter of official copyright registration policy, for a long time,

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

courts position on the copyrightability of illegal works remained

See Jennifer E. Rothman, Sex Exceptionalism in Intellectual Property, 23 STAN. L. POLY

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

THE CONSTITUTIONALITY OF CONTENT-BASED RESTRICTIONS

The Copyright and Patent Clause in the Constitution empowers

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

U.S. CONST. amend. I.

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

impose copyright restrictions based on the content of the work, the

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works

CONTENT-BASED RESTRICTIONS IN INTELLECTUAL PROPERTY

In order to evaluate justifications for keeping copyright law as

Published by Yale Law School Legal Scholarship Repository, 2014

Yale Journal of Law and Technology, Vol. 16 [2014], Iss. 2, Art. 5

16 YALE J.L. & TECH. 454 (2014)

However, the differences between trademark and patent and copyright

Haber: Copyrighted Crimes: The Copyrightability of Illegal Works